DETAILED ACTION
The Examiner acknowledges the cancelation of claim 4 in the amendments filed 4/30/2026.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/30/2026 has been entered.
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
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3 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, 3 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 is included with the current 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).
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).
In addition, Kimura teaches a dicing tape (20) comprises 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.
Regarding claim 3, while Asai/Kimura/Sasaki do not describe a post-UV irradiation anchoring force, Asai does instruct the means for adjusting the peel strength of PSA layer (B) (para 0124, 0129 and 0243). In addition, it is noted that,
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "Products of identical chemical composition cannot have mutually
exclusive properties." A chemical composition and its properties are inseparable.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant
discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Thus, given that Asai/Kimura/Sasaki teach the presently claimed UV-cured PSA layer comprising compounds identical to that presently claimed, and in the presently claimed proportions, it is reasonable to conclude that he PSA layer (B) would demonstrate the presently claimed post-UV curing anchoring force (i.e. 1 N/20 mm or more).
Response to Arguments
Applicant's arguments, see the claim amendments and the remarks filed 4/30/2026, with respect to the rejections of claims 1 and 3-8 over Asai in view of Sasaki et al. under 35 U.S.C. 103 as set forth in paragraph 4 of the action mailed 2/3/2026, have been fully considered but they are not persuasive.
The Applicant’s attention is respectfully directed to the prior art rejection set forth above, wherein it is noted that the cited prior art teaches or renders obvious all the limitations of the presently claimed invention; and which is a fair and complete response to the Applicant’s arguments. Specifically, Asai teaches that the substrate (20) comprises three layers, and that the layers comprises the polypropylene (PP) and ethylene-vinyl acetate (EVA), whereas the Kimura invention remedies Asai in regards to the presently claimed 3-layerd structure of PP/EVA/PP. Also, as set forth above, Kimura instructs the skilled artisan as to the motivation for employing the PP/EVA/PP base material layer (21) of Kimura as the substrate (20) of Asai.
In regards to the Applicant’s assertion towards the “anchoring property,” the Examiner respectfully reiterates that,
“[T]he discovery of a previously unappreciated property of a prior art composition, or of
a scientific explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use,
new function or unknown property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433 (CCPA 1977).
Further, and without conceding the persuasiveness of the future amendments to the claims in regards to specific anchoring properties, the is nothing is the claim language requiring any anchoring property(ies) limitations.
Conclusion
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 5/12/2026
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