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 .
Response to Amendment
This office action is in response to the amendment and remarks filed October 14, 2025 wherein claim 7 was canceled. Claims 1-6 are pending.
In view of the cancelation of claim 7, the previous Section 112 rejection is withdrawn as moot.
The claims remain rejected under Section 103 as set forth in the previous non-final rejection that is repeated below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kamiya, JP2004346296 (hereafter Kamiya), discussed with reference to the machine translation thereof, in view of Shintani et al., US 2007/0264498 (hereafter Shintani).
Regarding claim 1, Kamiya teaches a water-dispersed pressure-sensitive adhesive composition (paras [0001] and [0010]). A pressure-sensitive adhesive sheet of Kamiya is described as useful for semiconductor wafer processing used during back grinding or dicing of semiconductor wafers (para [0001]).
The composition of Kamiya includes:
a water-dispersed acrylic polymer described as an acrylic emulsion polymer (A) obtained by emulsion polymerization using a monomer component (A1) mainly composed of a (meth)acrylic acid alkyl ester and a reactive emulsifier (A2) having a radically polymerizable functional group (paras [0018]-[0026]);
an active energy ray-curable resin having a radiation-curable radically polymerizable polyfunctional monomer (B) component (paras [0018] and [0044]-[0046]); and
a photopolymerization initiator (para [0039]),
wherein the active energy ray-curable resin is an emulsion containing a tetrafunctional or higher radically polymerizable monomer, Kamiya teaching a preference for a method wherein the monomer (B) is dispersed in water to form an emulsion described at para [0054]); exemplary tetrafunctional or higher radically polymerizable monomers are taught at para [0044], including trimethylolpropane tri(meth)acrylate, pentaerythritol tri(meth)acrylate and dipentaerythritol hexa(meth)acrylate.
At para [0024], Kamiya teaches urethane acrylate may be a polyfunctional monomer component of the acrylic emulsion polymer (A). However, Kamiya is silent as to including urethane acrylate in the active energy ray-curable resin of Kamiya that includes the radiation-curable polyfunctional monomer (B).
Shintani is directed to a pressure-sensitive adhesive sheet for processing a semiconductor wafer, the sheet including a base material and a pressure-sensitive adhesive layer (Abstract). The pressure-sensitive adhesive is described as including a base polymer, a multifunctional acrylate-based oligomer having a molecular weight of 1000 to 2500 and a multi-functional acrylate-based compound having a molecular weight of 200 to 700 (Abstract). The base polymer of Shintani is an acrylic polymer, examples of which include an acrylic copolymer containing a (meth)acrylic ester as a main component and an unsaturated monomer co-polymerizable therewith as a monomer component (paras [0043]-[0044]). The preferred multifunctional acrylate-based oligomer of Shintani is a urethane acrylate oligomer (paras [0051]-[0052]). Preferred multifunctional acrylate-based compounds of Shintani include those having two or more energy-ray polymerizable carbon-carbon double bonds in the molecule thereof and a (meth)acryloyl group (para [0056]). Examples of preferred multifunctional alkyl acrylates include trimethylolpropane tri(meth)acrylate and pentaerythritol tri(meth)acrylate (para 0057]), i.e., tetrafunctional or higher radically polymerizable monomers. The adhesive of Shintani may also include a photopolymerization initiator (para [0064]).
Shintani teaches that its pressure-sensitive adhesive requires both the multifunctional acrylate-based oligomer (i.e., urethane acrylate) and the multifunctional acrylate-based compound (i.e., tetrafunctional or higher radically polymerizable monomer), otherwise problems occur, such as insufficient adhesive force and cohesive force, an insufficient decrease in adhesive force after curing and difficulty in picking up chips (para [0050]). In contrast, when both are used, Shintani teaches that the pressure-sensitive adhesive sheet exhibits excellent follow-up properties and adhesive force to a surface to which the sheet is to be adhered, particularly to a minute unevenness with a depth of about 0.4 to 40 µm can be obtained. Also, when an energy ray is irradiated, Shintani teaches that polymerization irregularity does not occur in an uneven portion such as a printed portion of the semiconductor wafer, because of the excellent follow-up properties to which the sheet is to be adhered, and the polymerization curing reaction homogeneously proceeds as well as good release from an adherend without the generation of adhesive residue on the adherend (para [0050]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the pressure-sensitive adhesive composition of Kamiya to include in its active energy ray-curable resin, both the radically polymerizable functional group (B) of Kamiya and the urethane acrylate taught in Shintani for the advantages taught in Shintani, including excellent follow-up properties and good release without the generation of adhesive residue on an adherend.
Regarding claim 2, as discussed in the rejection of claim 1 above, Kamiya and Shintani teach using the same tetrafunctional or higher radically polymerizable monomers (e.g., trimethylolpropane tri(meth)acrylate and pentaerythritol tri(meth)acrylate), Shintani teaching that its multi-functional acrylate-based compounds have a molecular weight of 200 to 700, falling within the recited range of 1,000 or less. Thus, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to predictably choose multi-functional acrylate-based compounds for the composition of Kamiya/Shintani that have a molecular weight of 200 to 700 as taught by Shintani as suitable for the composition. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Regarding claim 3, Kamiya teaches the proportion of its radiation-curable radically polymerizable polyfunctional monomer (B) is 20 to 200 parts by weight per 100 parts by weight of the acrylic emulsion polymer (A) (para [0012]), such range overlapping and rendering obvious the range recited in the claim. MPEP 2144.05. Shintani teaches the proportion of its acrylate-based oligomer (i.e., urethane acrylate) + multifunctional acrylate compound is 63 parts with respect to 100 parts by weight of the acrylic polymer employed as the base polymer (para [0029]), a value that falls within the recited range.
Regarding claim 4, please see the rejection of claim 1 above and the Kamiya teaching that its component (A) is an acrylic emulsion-based polymer obtained by emulsion polymerization (para [0012]). Regarding the recitation of "using a reactive surfactant," as discussed in the rejection of claim 1, Kamiya teaches the polymer (A) is mainly composed of a (meth)acrylic acid alkyl ester and a reactive emulsifier (A2) having a radically polymerizable functional group (para [0019]). The reactive emulsifier (A2) radically polymerizable functional group may have a carbon-carbon double bond, such as ethenyl group, propenyl group, allyl group or allyl ether group (paras [0027]-[0028). Specific examples include surfactants, such as sodium dodecylbenzenesulfonate (para [0031]) and polyoxyethylene fatty acid esters (para [0032]), identified in Applicant's specification as reactive surfactants (specification as filed at paras [0026]-[0028]).
Regarding claim 5, Kamiya teaches using a cross-linking agent at paras [0051]-[0053].
Regarding claim 6, the recitation of "for re-peeling" is a statement of future use that does not further limit this product claim. On the merits, Kamiya teaches that its radiation-curable, removable acrylic pressure-sensitive adhesive sheet has a structure that allows it to be peeled off by irradiation with radiation after it has been attached to an adherend (para [0061]). The pressure-sensitive sheet of Kamiya includes a pressure-sensitive adhesive layer and a base material described as a support (substrate), wherein the pressure-sensitive adhesive layer is a layer formed by using the composition of Kamiya (paras [0061]-[0063]).
Response to Arguments
Applicant's arguments filed October 14, 2025 have been fully considered but they are not persuasive.
The examiner finds unpersuasive the argument that a person having ordinary skill in the art would not have been motivated to combine the teachings of Shintani and Kamiya because Kamiya is a water-based adhesive wherein Shintani is a solvent-based adhesive. Kamiya teaches a water-based system and specifically teaches that its active energy ray-curable resin component is an emulsion. Shintani, although teaching that components of the adhesive composition "may be dissolved in an appropriate organic solvent to adjust its viscosity or the like to a state suitable for forming" (para [0068]), otherwise states the pressure-sensitive adhesive layer can be formed utilizing any conventional appropriate method (para [0068]). It is further noted that examples set forth on page 7 of Shintani do not disclose the use of solvents (and see, e.g., Example 1 that describes using "DPHA-40H" understood to be provided as a liquid monomer or diluted form that is not necessarily an organic solvent).
Even if, for argument's sake, Shintani is understood to teach a solvent-based adhesive composition, the examiner finds Applicant's position overly limiting. In order to rely on a reference under Section 103, it must be analogous art to the claimed invention. MPEP 2141.01(a) states:
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. The examiner must determine whether a reference is analogous art to the claimed invention when analyzing the obviousness of the subject matter under examination.
In this instance, both references and the claims of the application are directed to the same filed of endeavor, that of pressure-sensitive adhesive compositions. Even if the carriers are different (i.e., water vs. organic solvent), the same underlying polymers are the subject of the application claims, Kamiya and Shintani that are combined to achieve an adhesive composition that will form a pressure-sensitive adhesive layer.
Furthermore, the problems solved by Shintani are not related to solvent-based chemistry. The fact that there is no teaching in Shintani about emulsions or problems with water-based adhesives is not required for combining references in an obvious rejection. Kamiya, the primary reference, provides the teaching that the active energy ray-curable resin is an emulsion. The teachings in Shintani are directed to the underlying polymeric components, specifically, that the pressure-sensitive adhesive requires both the multifunctional acrylate-based oligomer (i.e., urethane acrylate) and the multifunctional acrylate-based compound (i.e., tetrafunctional or higher radically polymerizable monomer), otherwise problems occur, such as insufficient adhesive force and cohesive force, an insufficient decrease in adhesive force after curing and difficulty in picking up chips (para [0050]). Also as set forth in the rejection above, Shintani teaches that when both are used, the pressure-sensitive adhesive sheet exhibits excellent follow-up properties and adhesive force to a surface to which the sheet is to be adhered, particularly to a minute unevenness with a depth of about 0.4 to 40 µm can be obtained. Also, when an energy ray is irradiated, Shintani teaches that polymerization irregularity does not occur in an uneven portion such as a printed portion of the semiconductor wafer, because of the excellent follow-up properties to which the sheet is to be adhered, and the polymerization curing reaction homogeneously proceeds as well as good release from an adherend without the generation of adhesive residue on the adherend (para [0050]).
As to Applicant's statement that "Shintani uses urethane acrylate to improve peelability after UV irradiation ([0044] of Shintani)," para [0044] does not support that statement.
As to the statements directed to the claimed invention using an emulsion containing urethane acrylate to improve compatibility between the water-dispersible acrylic polymer and the active energy curable resin, it is not required that the combined prior art references recognize the specific problems solved by the invention. The requirement is that a person of ordinary skill in the would have been motivated to combine the reference to reach the claimed invention. It is the examiner's position that the teachings of Shintani set forth above provide such motivation.
Conclusion
THIS ACTION IS MADE FINAL. 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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746