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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated July 16, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
Claim Objections
Claim 12 is objected to because of the following informalities: “silicon pressure-sensitive adhesive” is listed in claim 12 while claim 1 states a “silicone pressure-sensitive adhesive”. Appropriate correction is required.
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.
Claims 1, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (USPN 5,366,809).
Schmidt et al. disclose a pressure-sensitive adhesive sheet (Abstract; Claims 16 – 20) comprising a pressure-sensitive adhesive layer having an adhesive face protected by a release liner (Column 2, lines 1 – 4) , wherein the pressure-sensitive adhesive layer is a pressure-sensitive adhesive layer formed from a pressure-sensitive adhesive composition comprising at least one adhesive selected from the group comprising a silicone-based pressure-sensitive (Abstract) adhesive as in claim 1. With respect to claim 12, the release liner comprises a base material having a release layer at least one release agent selected from (i) to (iii), and the pressure-sensitive adhesive composition comprises the silicon pressure- sensitive adhesive, the pressure-sensitive adhesive composition comprises a crosslinking agent, and an amount of the crosslinking agent used is 0.5 parts by weight or more and 10 parts by weight or less based on 100 parts by weight of the base polymer (Abstract; Claim 1) (i) a release agent comprising the silicone-based release agent to which at least one of silicon resin, or (iii) a fluorine-based release agent (Column 2, lines 1 – 4). However, Schmidt et al. fail to disclose a ratio of a sinking depth of the pressure-sensitive adhesive layer, obtained by an iron ball drop test performed on the adhesive face of the pressure-sensitive adhesive layer under the following condition, to a thickness of the pressure-sensitive adhesive layer (sinking depth/thickness x 100) is 15% or more: Iron ball drop test: performed by dropping an iron ball of 1 g freely from a height of 1 m onto the adhesive face, release strength of the release liner from the adhesive face of the pressure-sensitive adhesive layer is not less than 0.15 N/50 mm and not more than 5 N/50 mm, and wherein a displacement R of water contact angles θ1 and θ2 against the adhesive face under the following conditions T1 and T2 is 5° or less:
T1: immediately after separating the release liner under an environment of 23 °C
T2: after 2 hour exposure of the adhesive face to an atmospheric environment after separating the release liner under an environment of 23°C
θ1: water contact angle (°) of the adhesive face under T1
θ2: water contact angle (°) of the adhesive face under T2
Displacement R (°) = θ2 - θ1.
With regard to the limitations of “a ratio of a sinking depth of the pressure-sensitive adhesive layer, obtained by an iron ball drop test performed on the adhesive face of the pressure-sensitive adhesive layer under the following condition, to a thickness of the pressure-sensitive adhesive layer (sinking depth/thickness x 100) is 15% or more: Iron ball drop test: performed by dropping an iron ball of 1 g freely from a height of 1 m onto the adhesive face, release strength of the release liner from the adhesive face of the pressure-sensitive adhesive layer is not less than 0.15 N/50 mm and not more than 5 N/50 mm, and wherein a displacement R of water contact angles θ1 and θ2 against the adhesive face under the following conditions T1 and T2 is 5° or less:
T1: immediately after separating the release liner under an environment of 23 °C
T2: after 2 hour exposure of the adhesive face to an atmospheric environment after separating the release liner under an environment of 23°C
θ1: water contact angle (°) of the adhesive face under T1
θ2: water contact angle (°) of the adhesive face under T2
Displacement R (°) = θ2 - θ1.” Since the composition of the reference is the same as those claimed herein it follows that the adhesive sheets of Schmidt et al. would inherently possess the properties recited in claims 1, 12, and 13. See MPEP 2112. Support for said presumption is found in the use of similar materials (i.e. the silicone-based adhesive with the amount of crosslinking agent) and in the similar production steps (i.e. coating the materials on to the designated substrates at the designated locations) used to produce the adhesive sheets for electronics. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Claims 1 – 4, 6 – 11, and 14 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kiuchi et al. (EP 1 033 393 A2).
Kiuchi et al. disclose a pressure-sensitive adhesive sheet (Abstract; Figures) comprising a pressure-sensitive adhesive layer having an adhesive face protected by a release liner (Figure1, #3 and 4) , wherein the pressure-sensitive adhesive layer is a pressure-sensitive adhesive layer formed from a pressure-sensitive adhesive composition comprising at least one adhesive selected from the group comprising an acrylic pressure-sensitive or silicone adhesives (Paragraph 0013) adhesive; wherein, if the pressure-sensitive adhesive layer is formed from the acrylic pressure- sensitive adhesive composition, the pressure-sensitive adhesive layer comprises an acrylic polymer as a base polymer, and a content of the acrylic polymer in the pressure sensitive adhesive layer is 50% by weight or more based on a total weight of 100% by weight of the pressure-sensitive adhesive layer (Paragraphs 0016, and 0056 – 0059), wherein, if the pressure-sensitive adhesive composition comprises the acrylic pressure- sensitive adhesive, the pressure-sensitive adhesive composition comprises a photopolymerization initiator (Paragraph 0042), and wherein the photopolymerization initiator comprises at least one selected from the group comprising a benzoin ether-based photopolymerization initiator, an acetophenone-based photopolymerization initiator, an α-ketol-based photopolymerization initiator, an aromatic sulfonyl chloride-based photopolymerization initiator, a photoactive oxime-based photopolymerization initiator, a benzoin-based photopolymerization initiator, a benzyl-based photopolymerization initiator, a benzophenone-based photopolymerization initiator, a ketal- based photopolymerization initiator, and a thioxanthone-based photopolymerization initiator (Paragraph 0043) as in claim 1. With respect to claim 2, the pressure-sensitive adhesive sheet is used for receiving an electronic component disposed on a temporary fixing material (Abstract; Paragraph 0041). Regarding claim 3, the pressure-sensitive adhesive sheet is to be disposed so as to face, with a gap provided therebetween, a surface of a temporary fixing material on which an electronic component is disposed, and used for receiving the electronic component (Abstract; Paragraph 0041; It would have been an obvious matter of design choice to change the shape of the adhesive layer, since a modification would have involved a mere change in size of the adhesive layer. A change in size or shape is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. MPEP 2144.04 (I) and (IV).). For claim 6, a thickness of the pressure-sensitive adhesive layer is not less than 1 µm and not more than 500 µm (Paragraph 0046). In claim 7, the pressure-sensitive adhesive layer is formed from the pressure-sensitive adhesive composition comprising the acrylic pressure-sensitive adhesive (Paragraphs 0016, and 0056 – 0059). With regard to claim 8, the pressure-sensitive adhesive layer has a second pressure-sensitive adhesive layer stacked on a surface opposite to the adhesive face (Figure 2, #3). As in claim 9, the pressure-sensitive adhesive layer has a base material layer stacked on a surface opposite to the adhesive face (Figure 1, #1). With respect to claim 10, a second pressure-sensitive adhesive layer is stacked on a surface of the base material layer on which the pressure-sensitive adhesive layer is not stacked (Figure 2, #3). Regarding claim 11, the base material layer is formed from a polyester film (Paragraph 0032). For claim 14, the release liner comprises the base material having the release liner at least one release agent selected from (i) to (iii), and wherein the pressure-sensitive adhesive composition comprised in the pressure-sensitive adhesive layer is the acrylic pressure-sensitive adhesive: (i) the release agent comprising the silicone-based release agent to which at least one of silicon resin, silica, and ethyl cellulose is add (ii) the long chain alkyl-based release agent (iii) the fluorine-based release agent (Paragraph 0031). In claim 18, a second release liner on a second adhesive face of the pressure- sensitive adhesive layer opposite the adhesive face protected by the release liner (Figure 2, #4). In claim 19, a ratio of the alkyl (meth)acrylate in all monomer components (100% by weight) comprising the acrylic polymer is 85% by weight or more and 98% by weight or less, and a ratio of the hydroxyl group-containing monomer in all the monomer components (100% by weight) comprising the acrylic polymer is 1% by weight or more and 15% by weight or less, and the acrylic pressure-sensitive adhesive composition comprises a crosslinking agent, and an amount of the crosslinking agent used is 0.01 parts by weight or more and 5 parts by weight or less based on 100 parts by weight of the base polymer (Paragraphs 0016, and 0056 – 0059). With regard to claim 20, the ratio of the alkyl (meth)acrylate having a linear or branched alkyl group having 4 to 18 carbon atoms in all monomer components (100% by weight) comprising the acrylic polymer is 85% by weight or more and 98% by weight or less, and the ratio of the acrylic polymer contains the hydroxyl group-containing monomer as the monomer component comprising the acrylic polymer in all the monomer components (100% by weight) comprising the acrylic polymer is 1% by weight or more and 15% by weight or less, and the acrylic pressure-sensitive adhesive composition comprises the crosslinking agent, and the amount of the crosslinking agent used is 0.01 parts by weight or more and 5 parts by weight or less based on 100 parts by weight of the base polymer (Paragraphs 0016, and 0056 – 0059). However, Kiuchi et al. fail to disclose the release strength of the one second release liner from the one second adhesive face may be set to 1/3 to 1/2 of the release strength of the other release liner from the other adhesive face, a ratio of a sinking depth of the pressure-sensitive adhesive layer, obtained by an iron ball drop test performed on the adhesive face of the pressure-sensitive adhesive layer under the following condition, to a thickness of the pressure-sensitive adhesive layer (sinking depth/thickness x 100) is 15% or more: Iron ball drop test: performed by dropping an iron ball of 1 g freely from a height of 1 m onto the adhesive face, the release strength of the release liner from the adhesive face of the pressure-sensitive adhesive layer is not less than 0.15 N/50 mm and not more than 5 N/50 mm, the water contact angle θ1 is 120° or less and 110° or more, a change rate of a probe tack value obtained after 2 hour exposure of the adhesive face to an atmospheric environment to the initial probe tack value of the pressure-sensitive adhesive layer is more than – 14% and wherein a displacement R of water contact angles θ1 and θ2 against the adhesive face under the following conditions T1 and T2 is 5° or less:
T1: immediately after separating the release liner under an environment of 23 °C
T2: after 2 hour exposure of the adhesive face to an atmospheric environment after separating the release liner under an environment of 23°C
θ1: water contact angle (°) of the adhesive face under T1
θ2: water contact angle (°) of the adhesive face under T2
Displacement R (°) = θ2 - θ1.
With regard to the limitations of “wherein the release strength of the one second release liner from the one second adhesive face may be set to 1/3 to 1/2 of the release strength of the other release liner from the other adhesive face”, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a release materials with the desired properties, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
With regard to the limitation of “a ratio of a sinking depth of the pressure-sensitive adhesive layer, obtained by an iron ball drop test performed on the adhesive face of the pressure-sensitive adhesive layer under the following condition, to a thickness of the pressure-sensitive adhesive layer (sinking depth/thickness x 100) is 15% or more: Iron ball drop test: performed by dropping an iron ball of 1 g freely from a height of 1 m onto the adhesive face, the release strength of the release liner from the adhesive face of the pressure-sensitive adhesive layer is not less than 0.15 N/50 mm and not more than 5 N/50 mm, the water contact angle θ1 is 120° or less and 110° or more, a change rate of a probe tack value obtained after 2 hour exposure of the adhesive face to an atmospheric environment to the initial probe tack value of the pressure-sensitive adhesive layer is more than – 14% and wherein a displacement R of water contact angles θ1 and θ2 against the adhesive face under the following conditions T1 and T2 is 5° or less:
T1: immediately after separating the release liner under an environment of 23 °C
T2: after 2 hour exposure of the adhesive face to an atmospheric environment after separating the release liner under an environment of 23°C
θ1: water contact angle (°) of the adhesive face under T1
θ2: water contact angle (°) of the adhesive face under T2
Displacement R (°) = θ2 - θ1”, since the composition of the reference is the same as those claimed herein it follows that the adhesive sheets of Kiuchi et al. would inherently possess the properties recited in claims 1, 4, 13, and15 – 17. See MPEP 2112. Support for said presumption is found in the use of similar materials (i.e. the thickness and materials of the photopolymerization initiator, substrate and adhesives) and in the similar production steps (i.e. coating the materials on to the designated substrates at the designated locations) used to produce the adhesive sheets for electronics. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Response to Arguments
Applicant’s arguments with respect to the rejection(s) of claims 1 – 4 and 6 – 20 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of prior art above.
In response to Applicant’s argument with regard to the prior art failing to disclose a silicone adhesive, please see the newly presented rejection in view of Schmidt et al.
In response to Applicant’s argument that the prior art fails to disclose the composition listed in claims 19 and 20, please see the newly presented rejection in view of Kiuchi et al.
Conclusion
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 August 5, 2026
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