DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim(s) 3 in the amendments filed 8/14/2026.
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 .
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1 and 5-8 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of the base material comprising, inter alia, materials other than polypropylene (PP) and ethylene-vinyl acetate (EVA), and the claim also recites the base material comprising the three-layer structure of PP/EVA/PP, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asai (WO 2021/024863 A1) in view of Kimura et al. (JP 2021077874 A) and in further view of Sasaki et al. (US 2009/0314417 A1). The Examiner notes that citations from the ‘863 reference were taken from US 2022/0275254 A1, which is the English equivalent. The Examiner also notes that citations from the ‘874 reference were taken from a machine translation, which was included with the previous action.
Regarding claim(s) 1 and 5-8, Asai teaches a pressure-sensitive adhesive (PSA) sheet (1) comprising substrate (20) (base material) and photo-crosslinkable PSA layer (B) (114) comprising a photo-crosslinkable polymer;
which said substrate (20) is a plastic film (para 0031, Fig. 1) comprising, inter alia, a polyolefin (current claim 7) (para 0359);
and which said photo-crosslinkable polymer of layer (B) (base polymer) of a type-B layer (B) is a polymer (PB) being a UV-cross-linkable polymer having a benzophenone side chain structure (carbon-carbon double bond, current claim 6) (para 0036), and thus teaches a UV-curable PSA. The polymer (PB) also comprises monomer(s) other than the monomers providing the benzophenone side chain structure (para 0041-0045, 0051).
Asai also teaches that the PSA layer (B) comprises a photoinitiator towards polymerization or curing (photopolymerization initiator) (para 0089), and an isocyanate-based crosslinking agent (current claim 5) in an amount of 0.001 to 5 parts by weight per 100 parts by weight of the monomers forming the PSA composition towards a balance of adhesive strength and cohesive strength (para 0161-0163).
Thus, while the proportions of the crosslinking agent of Asai are based upon all the monomers of the PSA composition, and that presently claimed in based on the proportions of the base polymer (i.e., 0.02 to 0.6 part by weight or less), it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the isocyanate-based crosslinker of Asai in the presently claimed proportions towards said PSA layer (B) demonstrating the balance of adhesion and cohesion required of the prior art’s intended application as in the present invention.
Asai does not disclose that the substrate (i.e., the base material) has a three-layer structure of polypropylene (PP)/ethylene vinyl acetate (EVA)/polypropylene (PP), nor does Arai specify an anchoring force between the photo-crosslinkable PSA layer (B) (114) and the substrate (20).
However, Asai does disclose that the substrate is a resin film that has a three-layer structure (para 360); and that the resin film comprises resins such as, inter alia, EVA copolymers and polyolefins (para 0361), the latter of which includes polypropylene (para 0364). Arai also contemplates anchoring the PSA layer to the substrate, and instructs that known methods are employed to this end such as, inter alia, corona discharge treatment towards increasing the tightness of the adhesion between the substrate and PSA layer (para 0370).
Indeed, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the degree of substrate surface treatment towards providing an anchoring force between the substrate (20) and the PSA layer (B) following UV curing of PSA layer (B) of Arai identical to that presently claimed (i.e., 2.8 N/20 mm or more) based on the anchoring requirements of the prior art’s intended application as in the present invention.
In addition, Kimura teaches a dicing tape (20) comprising a base layer (21) and an adhesive layer (22) on the base layer (21) (para 0019). Kimura also teaches that the base layer (21) is composed of three layers comprising laminate layers with higher and lower elastic moduli toward adjusting the elastic modulus of the base layer (21) to be controlled (para 0036).
The three layer base layer (21) laminate comprises two non-elastomer layers (X,X) and an elastomer layer (Y) having a structure of X-Y-X (para 0037) such as non-elastomer layers containing, inter alia, polypropylene (para 0040) and an elastomer layer containing, inter alia, EVA (para 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the substrate of Asai with the presently claimed three-layer PP/EVA/PP laminate structure based on the elastic modulus of the substrate required of the prior art’s intended application as in the present invention.
Asai/Kimura is silent to a phosphoric acid ester-based surfactant in an amount of 0.03 parts by weight or more per 100 parts by weight of the UV-cross-linkable polymer having a benzophenone side chain structure.
However, Asai does instruct that the PSA layer (B) does include additives generally used in the field of PSA (para 0175). In addition, an alternative embodiment of Arai provides PSA layer with a release liner (31) (i.e., a base material) instead of substrate (20) (para 0034; Fig.2).
Furthermore, Sasaki teaches a UV-curable PSA layer comprises an acrylic base polymer, phosphoric ester compound and carbon-carbon double bond-containing acrylate oligomer and/or monomer (abstract, 0021-0023), which said phosphoric ester compound is a surfactant (para 0027) and is present in an amount of 0.05 to 2 parts by weight per 100 parts by weight of the base polymer towards a balance of providing the surfactant effect and adequate pre-irradiation adhesive force (para 0010-0011, 0031).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA layer (B) of Asai/Kimura with the phosphoric ester surfactant in the presently claimed proportions towards said PSA layer (B) demonstrating adequate pre-UV radiation adhesion as in the present invention.
The recitation in the claims that the PSA sheet is “for semiconductor processing” (current claim 1) and is “used in a semiconductor processing step process including a solvent washing step” (current claim 8) are merely an intended uses. 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 Asai discloses a PSA sheet as presently claimed, it is clear that the PSA sheet of Arai would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Response to Arguments
Applicant's arguments, see the remarks filed 8/14/2026, with respect to the rejection of claims 1, 3 and 5-8 under 35 U.S.C. 112(b) a set forth in paragraphs 6-7 of the action mailed 5/14/2026, have been fully considered but they are not persuasive.
The Examiner acknowledges the cited portions of the specification, and the Applicant’s own acknowledgement that the narrower of the recitation of the three-layer structure comprising PP/EVA/PP. Indeed, this is the basis of the rejection; the claim simultaneously limits the base material broadly in lines 9-14 of current claim 1 followed by a more narrow limitation of the base material in lines 17-18, which is prohibited by the cited portion of the MPEP noted above. In addition, the other polymeric material recited in lines 9-14 (e.g., polyether sulfone) are outside the scope of the PP/EVA/PP materials. Thus, the rejection is maintained and repeated above.
Applicant's arguments, see the claim amendments and the remarks filed 8/14/2026, with respect to the rejections of claims 1, 3 and 5-8 over Asai in view of Kimura and in further view of Sasaki et al. under 35 U.S.C. 103 as set forth in paragraph 8 of the action mailed 2/3/2026, have been fully considered but they are not persuasive.
In regards to the presently amended claim 1, wherein the anchoring force has been further limited to be between the PSA layer and the base material, and wherein the anchoring force has been increased to 2.8 N/20 mm, the Applicant’s attention is respectfully directed to the updated prior art rejection set forth above, where the prior art teaches or renders obvious all the limitations of the presently claimed invention to include the above-noted amendments to at least current claim 1.
In this regard, the Applicant is reminded that,
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
Examiner’s emphasis.
Indeed, as noted above in the prior art rejection, Asai conspicuously instructs one skilled in the art as to the motivation as methods for increasing the adhesion between the disclosed substrate (20) and the PSA layer (114). Further, the choice for selecting a quantitative value representing said increased adhesion (such as that presently claimed) would have been an obvious choice to one or ordinary skilled based on the particular requirements in this matter of the prior art’s intended use.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 10/1/2026
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