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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/15/2026 has been entered.
Claim Objections
Claims 15 and 16 are objected to because of the following informalities:
Claim 15, line 2, “a metal chelate” should read “the metal chelate”.
Claim 16, line 2, “an epoxy compound” should read “the epoxy compound”.
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.
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.
Claims 1-2, 5-6, 9, 12, 15-16, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Joo et al. (US 2012/0270381 A1).
Regarding Claims 1-2, Joo discloses a die attach film that comprises a base film (i.e. claimed substrate), a pressure-sensitive adhesive part (i.e. claimed base layer), and an adhesive part (i.e. claimed adhesive layer), in this order (para 0014). The pressure-sensitive adhesive part (i.e. claimed base layer) comprises a base resin which may include an acrylic resin (para 0026) including a copolymer of (meth)acrylic acid ester and a monomer having a carboxyl group (paras 0027, 0029), and a crosslinking agent (i.e. curing agent) such as an epoxy compound or a metal chelate (para 0034).
The base layer (i.e. claimed substrate) may have a thickness of 10-200 microns (para 0022), and the ratio of the thickness of the pressure sensitive adhesive part (i.e. claimed base layer) to the base layer (i.e. claimed substrate) is 0.15 to 0.5 (para 0017). Therefore the thickness of the pressure-sensitive adhesive part (i.e. claimed base layer) is 1.5 to 100 microns (10*0.15 to 200*0.5).
Joo further discloses the base layer (i.e. claimed substrate) comprises film having copolymer of polyethylene and polytetrafluoroethylene (para 0020).
In light of the overlap between the claimed film and that disclosed by Joo, it would have been obvious to one of ordinary skill in the art to produce a film that is both disclosed by Joo and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
While Joo does not disclose the elongation rate of the pressure-sensitive adhesive part (i.e. claimed base layer), since Joo discloses pressure-sensitive adhesive part comprising all the limitations of the claimed base layer, including carboxyl group-containing (meth)acrylic polymer, epoxy or metal chelate curing agent, and thickness that overlaps that presently claimed. Within the overlapping range, the pressure-sensitive adhesive part would necessarily have elongation rate as claimed.
Regarding Claims 5-6 and 15-16, Joo discloses all the limitations of the present invention according to Claims 1 and 2 above. Joo further discloses the pressure-sensitive adhesive part (i.e. claimed base layer) comprises the epoxy or metal chelate crosslinking agent, in an amount of 2 to 40 parts by weight with respect to 100 parts base resin (para 0034).
Regarding Claims 9 and 19, Joo discloses all the limitations of the present invention according to Claims 1 and 2 above. Joo further discloses the base layer (i.e. claimed substrate) may be subject to corona treatment (para 0020).
Regarding Claims 12 and 22, Joo discloses all the limitations of the present invention according to Claims 1 and 2 above. While Joo discloses film used in semiconductor production (Abstract), there is no disclosure of the film being a mold release film as claimed. However, Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Joo discloses a film as presently claimed, it is clear that the film would be capable of performing the intended use, i.e. used in a process of encapsulating a semiconductor device with a curable resin, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Joo as applied to claims 1 and 2 above, and further in view of Morimoto et al. (JP 2019/161031 A). It is noted that the disclosure of Morimoto is based on a machine translation of the reference mailed 07/01/2025.
Regarding Claims 4 and 14, Joo discloses all the limitations of the present invention according to Claims 1 and 2 above. Joo does not disclose the acid value of the pressure-sensitive adhesive part (i.e. claimed base layer).
Morimoto discloses an adhesive tape for semiconductor wafers comprising base film (i.e. substrate) and adhesive layer (para 0018), wherein the adhesive layer comprises an acrylic adhesive polymer preferably having an acid value of 2.0 mgKOH/g or less, to achieve desirable adhesive strength (para 0053).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Joo to incorporate the teachings of Morimoto to produce the film of Joo wherein the pressure-sensitive adhesive part (i.e. claimed base layer) has an acid value of 2.0 mgKOH/g or less. Doing so would achieve desirable adhesive strength.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Joo as applied to claims 1 and 2 above, and further in view of Yokoi et al. (JP 2011/151355 A). It is noted that the disclosure of Yokoi is based on a machine translation of the reference mailed 07/01/2025.
Regarding Claims 10 and 20, Joo discloses all the limitations of the present invention according to Claims 1 and 2 above. Joo further discloses the adhesive part (i.e. claimed adhesive layer) may comprise (meth)acrylic resin having hydroxy group (paras 0039, 0048-0050), and a hardener which is not limited (para 0052).
Joo does not disclose the hardener being polyfunctional isocyanate compound.
Yokoi discloses a tape (i.e. film) for semiconductor wafers (para 0009) that has a substrate, intermediate resin layer (i.e. base layer), and adhesive layer in this order (para 0017). The intermediate resin layer comprises carboxyl (meth)acrylic resin (para 0019) and crosslinker such as epoxy or metal chelate (para 0023). Yokoi further discloses the adhesive layer comprises a copolymer made from hydroxyethylacrylate (para 0031) and crosslinker such as polyfunctional isocyanate, which is used to control the value of the adhesive force and the cohesive force (para 0032).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Joo to incorporate the teachings of Yokoi to produce the film of Joo using polyfunctional isocyanate as the hardener in the adhesive part (i.e. claimed adhesive layer). Doing so would control the value of the adhesive force and the cohesive force.
Claims 11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Joo as applied to claims 1 and 2 above, and further in view of Kurihara et al. (US 2019/0088528 A1).
Regarding Claims 11 and 21, Joo discloses all the limitations of the present invention according to Claims 1 and 2 above. Joo does not disclose the antistatic layer as claimed.
Kurihara discloses an adhesive film 100 (para 0066) comprising base material layer (i.e. substrate) 10 and adhesive resin layer 20 (para 0071) where the adhesive resin layer 20 comprises resin layer 20c, antistatic layer 20b and adhesive layer 20a (paras 0088 and 0090, Fig. 3). The antistatic layer decreases the electrostatic potential of the adhesive film (para 0089) and improves the antistatic property and suppresses the amount of static electricity being generated when the adhesive film is peeled off from the semiconductor wafer (para 0152).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Joo to incorporate the teachings of Kurihara and produce the film of Joo further comprising an antistatic layer between the pressure-sensitive adhesive part (i.e. claimed base layer) and the adhesive part (i.e. claimed adhesive layer). Doing so would decrease the electrostatic potential of the film, improve the antistatic property, and suppress the amount of static electricity being generated when the adhesive film is peeled off from the semiconductor component.
Response to Arguments
Applicant's arguments filed 04/15/2026 have been fully considered but they are not persuasive.
Applicant argues that paragraph 0036 of Joo discloses the thickness of the pressure-sensitive adhesive is 10-40 microns, which is outside of the claimed base layer thickness (i.e. 0.1-3.0 microns).
However, the thickness disclosed in Joo paragraph 0036 is an example and does not teach away from other thicknesses. Joo paragraph 0036 further discloses “the thickness of the pressure-sensitive adhesive part including the aforementioned components is not substantially restricted as long as it satisfies the aforementioned thickness relationship”, referring to the thickness ratios disclosed in paragraphs 0017-0018, where Joo requires the ratio of PSA thickness to base film thickness is 0.15-0.5. In paragraph 0022, Joo discloses the thickness of the base film should 10-200 microns, to maintain stability, prevent generation of burrs, and prevent change in the elongation ratio. Therefore, since the base film thickness is 10-200 microns, and the ratio of PSA thickness to base film thickness is 0.15-0.5, the PSA thickness may be 1.5-100 microns (10*0.15 to 200*0.5).
Applicant also argues that in paragraph 0022, Joo teaches away from base film thickness less than 10 microns, and therefore teaches away from the claimed base film thickness of 0.1-3.0 microns.
However, paragraph 0022 discloses the “base film” of Joo has a thickness of 10-200 microns. The “base film” of Joo corresponds to the claimed “substrate layer”, while the “pressure sensitive adhesive” of Joo corresponds to the claimed “base layer”
Applicant argues that, while Joo discloses fluororesin base film in paragraph 0020, the Examples of Joo use polyolefin base film.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). The fact remains that Joo does disclose fluororesin as claimed as a suitable base film; therefore it would be obvious for a person having ordinary skill in the art to produce the composite of Joo using the disclosed fluororesin as claimed.
Applicant argues that the fluororesin in the substrate is critical to achieve releasability.
It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the criticality of the claimed fluororesin must be supported by a declaration or affidavit. Applicant has not provided any evidence to show the criticality of the claimed fluororesin. Examiner notes that all the examples in the present data, including comparative examples 10-12, use ETFE copolymer in the substrate (para 0106).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
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