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 .
Response to Amendment
This office action is in response to the Amendments to the Claims and Remarks filed October 22, 2025 wherein claims 6 and 7 were canceled.
In view of the cancelation of claims 6 and 7, the previous Section 112 rejection is withdrawn as moot.
Claims 1-5 remain pending and have not been amended. These claims are rejected for the same reasons as presented in the previous Office Action that is repeated below:
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sakakibara, US 2015/0337188 (hereafter Sakakibara) in view of Ogino et al., US 2019/0164802 (hereafter Ogino).
Regarding claim 1, Sakakibara teaches a method of manufacturing a laminate (para [0118] using a two-pack curable polyorganosiloxane composition (Abstract and para [0118]), the method providing a rapid curing property (Abstract) and overcoming problems that may occur with the application of a single mixture, such as undesirable curing in an applicator or long curing time when the heat-curable composition is applied between two substrates (paras [0006]-[0007]).
A method of Sakakibara includes:
forming a first adhesive coating layer on a surface of a first substrate (para [0118];
forming a second adhesive coating layer on a surface of a second substrate (para [0118]); and
bonding the first adhesive coating layer and the second adhesive coating layer, followed by curing para [0118], such curing is further advanced by heating (para [0115]), to form an adhesive layer from the first adhesive coating layer and the second adhesive coating layer (para [0118]).
Regarding the recitation that "the first adhesive coating layer is formed from a first adhesive composition" and "the second adhesive coating layer is formed from a second adhesive composition," Sakakibara teaches a first adhesive composition and a second adhesive composition (Abstract; paras [0011]-[0018]). Para [0108] teaches both compositions may include component (A), an alkenyl group-containing polyorganosiloxane, understood to exhibit adhesiveness, thus both compositions of Sakakibara are understood to be adhesive compositions. As to the adhesives being "coating" layers, Sakakibara teaches application of its components by "coating" at para [0124].
The second adhesive composition of Sakakibara contains a first thermosetting component (A), an alkenyl group-containing polyorganosiloxane, that contains two or more alkenyl groups in the molecule (para [0012] and [0400]-[0060]) and a second thermosetting component (B), a polyorganohydrogen siloxane that has two or more hydrogen atoms bonded to a silicon atom in the molecule (para [0013]), that reacts with the first thermosetting component (A) in the presence of a catalyst - see para [0061] discussion of the component (B) acting as a crosslinking agent for (A) by undergoing an addition reaction between the hydrosilyl group in the molecule and a functional group in (A); and see para [0096] discussing how a catalyst component (C) accelerates the addition reaction between the alkenyl groups in (A) and the Si-H groups in (B).
The first adhesive composition of Sakakibara contains the catalyst (C) - para [0108] describing the first component being made up of (A) and (C) and the second component may comprise (B) and (A).
Regarding the recitation that "at least one of the first adhesive composition and the second adhesive composition contains a release agent component," the examiner did not find a special definition of the phrase "release agent component" in the specification as filed. Thus, the phrase must be given its broadest reasonable interpretation in light of the specification. MPEP 2111. The word "release" indicates a particular intended use or future result. Thus, "release agent component" is understood as a product-by-process claim limitation. The specification as filed describes examples of the "release agent component," as including a polydimethyl siloxane (para [0057] of the specification as filed), and further exemplified by the methyl group-containing polyorganosiloxane represented by the formula (MI) set forth in paras [0073]-[0074] of the specification as filed.
Sakakibara teaches that at least one of the first adhesive composition and the second adhesive composition of Sakakibara contains a component (E), identified as a "diluent" that is preferably a silicone oil having no alkenyl groups or hydrosilyl groups which may be involved in the curing reaction (para [0102] and see, for example, Table 2 of page 9 and Table 3 at page 10 that include examples wherein the component (E) is present in both the first and second kit components). Preferably, the component (E) of Sakakibara is a polymethylsiloxane in which each end is terminated with trimethylsiloxane unit and the intermediate units consist of a dimethylsiloxane unit (para [0102]), i.e., the same as the methyl group-containing polyorganosiloxane described in the specification as filed, thus rendering obvious the recited "release agent component" of claim 1.
Although Sakakibara does not identify the component (E) as a "release agent component," the material disclosed in Sakakibara and the claimed material are the same and presumed to therefore have the same properties. The burden is shifted to 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).
Sakakibara teaches that its first and second substrates include a variety of materials, including metals, plastics and glass (para [0119], any of which may be understood as the "support substrate" recited in claim 1. Sakakibara teaches examples of its substrates include the image display section of an image display device, such as a cathode-ray tube display, a liquid crystal display, a plasma display or an organic EL display (para [0119]). Although image display devices are known to include semiconductors within their display sections, because Sakakibara does not explicitly teach forming a coating layer on a surface of a semiconductor substrate, Ogino is also being applied against claim 1.
Ogino teaches an adhesive and method of using the adhesive on a semiconductor wafer surface (Abstract) for bonding a support substrate and a front face of a wafer, i.e., a surface of a semiconductor substrate, followed by polishing of the back face of the wafer (para [0013]). The adhesive of Ogino includes a component (A) that cures by hydrosilylation reaction and a component (B) containing a polydimethylsiloxane (para [0015]). In particular, component (A) includes a polysiloxane (A1) and a platinum group metal-based catalyst (A2) (para [0016]). The polysiloxane (A1) further contains a polyorganosiloxane (a1) that includes C2-20 alkenyl group as substituents and polyorganosiloxane (a2) composed of siloxane units and hydrogen atom as substituents (para [0057]). Component (B) is a polydimethylsiloxane (para [0017]) and may be a dimethyl silicone oil comprising polydimethylsiloxane (para [0070]). The adhesive composition of Ogino is prepared by mixing the components (see, e.g., paras [0102]-[0105]), followed by coating of the mixture to a circuit-bearing face of a wafer (para [0140]) and then bonding to a support wafer using heat treatment (para [0140]).
Thus, Ogino teaches the use of an adhesive composition for bonding a support substrate to a surface of a semiconductor substate, such composition including all of the same constituents taught by Sakakibara for its two-pack curable polyorganosiloxane composition. 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 therefore predictably use the process of separately selectively applying adhesive composition components to two substates to be bonded as taught by Sakakibara, but wherein the substrates are a support and a circuit-bearing substate as taught by Ogino, in view of the fact that both the adhesive of Sakakibara and the adhesive of Ogino include the same components, because 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). Furthermore, such combination is rendered advantageous by the teaching in Sakakibara that separating the application of the catalyst containing component from some of the adhesive components until the moment of contact during a bonding process results in an excellent rapid curing property and solves problems, including the undesirable curing of the adhesive mixture in the applicator during a coating process.
Regarding claims 2 and 3, please see the rejection of claim 1 above, the first thermosetting component (A) of Sakakibara being an alkenyl group-containing polyorganosiloxane (para [0012]) that is further described with respect to the formula 1a at para [0020] wherein each Ra group is independently a C2-C6 alkenyl group (paras [0020]-[0024]), overlapping and thus rendering obvious the recitations in claims 2 and 3 of an alkenyl group having 2 to 40 carbon atoms bonded to a silicon atom. MPEP 2144.05. As to the second thermosetting component having a Si-H group or including a polyorganosiloxane having an Si-H group, please see the rejection of claim 1 above and the Sakakibara teaching of its component (B) including Si-H group(s) at paras [0025]-[0035]). Regarding the recitation that the catalyst includes a platinum group metal-based catalyst, see the rejection of claim 1 above and Sakakibara at paras [0014] and [0096].
Additionally, see Ogino teaching its component (A) includes polyorganosiloxane (a1) having a C2-10 alkenyl group (para [0062]); polyorganosiloxane (a2) having an Si-H group structure (para [0063]) and a platinum group metal-based catalyst (A2) (para [0066]).
Regarding claim 4, see the discussion in the rejection of claim 1 above that the component (E) of Sakakibara is polyorganosiloxane in the form of a silicone oil having no alkenyl groups or hydrosilyl groups which may be involved in the curing reaction (para [0102]), thus teaching the component (E) is a non-curable polyorganosiloxane.
Also see Ogino teaching its component (B) may be a dimethyl silicone oil comprising polydimethylsiloxane, also understood as being non-reactive, i.e., a non-curable polyorganosiloxane.
Regarding claim 5, Sakakibara is silent as to processing steps other than coating and bonding being performed on the substrates discussed therein. However, Ogino teaches the steps of:
processing the semiconductor substrate of the laminate (processing a back surface of a wafer described at par [0045]); and
separating the processed semiconductor substrate processed in the first step and the support substrate from each other (peeling described at para [0045] and [0086]-[0093]).
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 Sakakibara/Ogino, to perform further processing and peeling as described in Ogino, if desired, in view of the fact that the cured adhesive layer formed by the process of Sakakibara and the cured adhesive layer formed by the process of Ogino are identical. Therefore, in view of the teachings of Ogino, it would have been obvious to perform the processing steps described therein as predictable and suitable because 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).
Response to Arguments
Applicant's arguments filed October 22, 2025 have been fully considered but they are not persuasive.
Applicant is understood to first argue at pages 4-6, that the Office Action set forth insufficient findings to support a conclusion of obviousness because Ogino, the secondary reference, is directed to a peelable adhesive, while Sakakibara, the primary reference, is directed to a permanent adhesive. It is noted that Sakakibara never describes its adhesive using the word "permanent," but is silent as to a peeling process. Applicant at page 6 then states that because Sakakibara is directed to a polyorganosiloxane designed as a permanent adhesive, "[as] such, a laminate made using the two-pack curable polyorganosiloxane composition of Sakakibara cannot be peeled," a conclusory statement that amounts to attorney argument with no evidentiary support. Then, Applicant argues at pages 7-8 that Sakakibara and Ogino are not properly combinable analogous art.
First, Applicant's arguments are not persuasive as they are not commensurate with claim 1 that is broadly directed to a method of manufacturing a laminate that includes steps of bonding and heating. Specifically, claim 1 recites forming a first adhesive coating layer on a surface of a support substrate and forming a second adhesive coating layer on a surface of a semiconductor substrate and bonding the layers followed by heating. The adhesive coatings recited in claim 1 are further limited by a first and second thermosetting components, a catalyst and a release agent component, none of which are further limited. Thus claim 1 does not limit the adhesive to polyorganosiloxane-containing compositions and does not include a peeling step. Even claim 5 that includes the step of separating the semiconductor substrate does not recite the step of peeling. The fact that Sakakibara is silent as to a step of peeling and Ogino teaches a peeling step is not dispositive here, as none of the claims recite the step of peeling.
Applicant does not contest that the primary reference, Sakakibara, teaches all of the method steps of claim 1 except that it does not explicitly teach forming the second adhesive coating layer on a surface of a semiconductor substrate, which is taught by Ogino. Sakakibara however does teach that examples of its substrates include the image display section of an image display device, such as a cathode-ray tube display, a liquid crystal display, a plasma display or an organic EL display (para [0119]). Image display devices are known to include semiconductors within their display sections, but because Sakakibara does not explicitly teach forming a coating layer on a surface of a semiconductor substrate, Ogino has been applied against claim 1. The Section 103 rejection does not rely upon the Ogino teaching of its adhesive being peelable to combine Sakakibara and Ogino to make the rejection. Rather, the Office Action sets forth that the motivation to combine the references is that the two-part adhesive of Sakakibara and the one-part adhesive of Ogino include the same components, with the component (E) of Sakakibara being the same material as the material of the release agent component disclosed in the specification. MPEP 2141 directs that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. In this instance, Ogino teaches one of ordinary skill in the art that the method and adhesive of Sakakibara that is recited in claim 1 is suitable for bonding to a semiconductor substrate. And with respect to claim 5, the combined method of Sakakibara/Ogino teaches the adhesive of Sakakibara is also suitable for use in a process wherein the support substrate and the semiconductor substrate may be separated from one another at a later processing step.
The examiner disagrees with Applicant's position that the references are not analogous art. In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004); MPEP 2141.01(a)(I). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
In this instance, the "claimed invention," i.e., the invention recited in claim 1, is a method of manufacturing a laminate wherein two substrates are bonded using adhesive layers. As set forth in the Section 103 rejection above, Sakakibara and Ogino are also directed to methods of manufacturing a laminate wherein two substrates are bonded using an adhesive layer or layers. Simply put, they are in the same field of endeavor, that of adhesive bonding. Thus, both Sakakibara and Ogino are analogous art to the claimed invention under the "same field of endeavor" test and are therefore properly combined to make the Section 103 rejection. Also, as explained above, there is no requirement for Sakakibara or Ogino to be reasonably pertinent to a problem the inventor was trying to solve in order to be considered analogous art.
As to Applicant's argument directed to In re Clay set forth on page 7 of the Remarks, the examiner notes that Applicant failed to provide a citation of that case. In order to advance prosecution, the examiner understands Applicant may be relying on In re Clay, 966 F.2d 656,658, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992) discussed in MPEP 2141.01(a). Unlike In re Clay, that was directed to a gel used in two very different environments, one the extraction of crude petroleum and the other, the storage of refined liquid hydrocarbons, in this instance, Sakakibara and Ogino are directed to adhesives used in the same environment, that of bonding two substrates together, distinguishing over In re Clay.
As to the argument on page 7 following the discussion of In re Clay, this argument is understood to be that one of ordinary skill in the art would never be motivated to combine teachings of a reference directed to a permanent adhesive with a reference directed to a temporary adhesive. The examiner notes that even if an adhesive is understood as permanent, it is known in the art to design adhesives so that substrates may be removed for purposes such as repair or recycling. However, in this instance, Applicant's argument is not commensurate with claim 1, that is not limited to either a permanent or temporary adhesive. Also, as set forth above, the motivation to combine Sakakibara and Ogino is that they are both directed to using adhesives to bond substrates, the two-part adhesive of Sakakibara and the one-part adhesive of Ogino including the same components, thus rendering predictable the use of the adhesive of Sakakibara to bond a semiconductor substrate.
Conclusion
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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746