DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 2 in the amendments filed 11/26/2025.
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 § 103
Claim(s) 1 and 3-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asai (WO 2021/024863 A1) in 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.
Regarding claim(s) 1 and 4-8, 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.
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 claims 4-5) 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 adhesion and cohesion (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., 1 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 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).
In addition, 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 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/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/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 11/26/2025, with respect to the rejections of claims 1-8 over Asai in view of Sasaki et al. under 35 U.S.C. 103 as set forth in paragraph 4 of the action mailed 8/29/2025, 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 Asai conspicuously discloses that the substrate (20) is a polyolefin film, which is identical to the presently claimed base material of current claims 1 and 7, in addition to the nonwovens, paper and metal foils presently argued. In addition, while the specific application of Sasaki’s is not identical to that disclosed in Asai, or in the presently claimed/disclosed invention, Sasaki’s radiation (i.e., UV) curable PSA comprising an acrylic polymer with carbon-carbon double bonds would establish Sasaki as analogous to the photo-crosslinkable PSA layer (B) of the primary Asai invention.
Furthermore, Asai’s disclosure contemplating known PSA additives for inclusion into the photo-crosslinkable PSA layer (B) would immediately invite the invention of Sasaki and its specific disclosure of the presently claimed phosphoric ester compound as a surfactant, and its motivation for inclusion into said photo-crosslinkable PSA layer (B). Indeed, as acknowledged by the Applicant, and as cited above, Sasaki instructs the skilled artisan towards including a phosphoric ester surfactant into a UV-curable PSA component towards providing a surfactant effect and adequate pre-irradiation adhesive force, the latter of which is identical to that methodology (i.e. UV curing) employed in the Asai invention.
Moreover, it is further noted that case law provides 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).
Lastly, the Examiner acknowledges the commensuration in scope of the presently claimed 0.03 to 1 parts by weight of the phosphoric acid ester-based surfactant with the presently disclosed data of Tables 1-2. However, it is unclear from said data whether the presently argued superior effects is provided due to the phosphoric ester compound as a surfactant in the claimed amounts. The Examiner respectively submits that Comparative Example 6 (CE 6) employs the same polymer as the inventive examples (i.e., Polymer 2) and the same phosphoric ester compound (i.e., RL-210) as the inventive examples and in the same proportions claimed/disclosed (i.e. 0.5 pbw); however, CE 6 demonstrates an inadequate anchoring force following UV radiation (i.e., 0.5) compared to the minimum value of the inventive examples (i.e., 2.2). CE 6 does not provide good pick-up adhesive residue results.
It is significant to note that, other than CE 6, all the other comparative examples either do not employ a phosphoric ester compound as a surfactant or employ phosphoric ester compounds (e.g., NS230) different from those of the inventive examples. Also, CE 6 employe the cross-linking agent in an amount (i.e., 0.01 pbw) that is significantly less than the minimum value employed in the inventive examples using the RL-210 phosphoric ester compound (i.e., 0.1 pbw of Example 10), and significantly less than all the other comparative examples.
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 1/30/2026