DETAILED ACTION
This is an Office action based on application number 18/430,976 filed 2 February 2024, which claims priority to JP2023-188235 filed 2 November 2023 and JP2023-016163 filed 6 February 2023. Claims 1-6 are pending.
Amendments to the claims, filed 25 June 2026, have been entered into the above-identified application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 June 2026 has been entered.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 JP2009073920A with citations taken from the provided machine translation (JP920) in view of Shintani et al. (US Patent Application Publication No. US 2007/0264498 A1) (US498) as evidenced by Chemical Book – 2-Hydroxy-2-methylpropiophenone (Chemical Book).
Regarding instant claims 1-5:
JP920 discloses a removable pressure-sensitive adhesive sheet comprising a pressure-sensitive adhesive layer formed on a substrate, wherein the pressure-sensitive adhesive layer is formed from a water-dispersible pressure-sensitive adhesive composition comprising an emulsion [A] of a (meth)acrylic acid ester copolymer and a crosslinking agent (paragraph [0006]).
JP920 further discloses that the (meth)acrylic acid ester copolymer emulsion [A] is prepared by dispersing, in water, and emulsion-polymerizing a monomer mixture comprising at least a (meth)acrylic alkyl ester (a1) (paragraph [0008]).
JP920 further discloses that the crosslinking agent is inclusive of epoxy-, oxazoline-, and carbodiimide-based compounds; furthermore, these crosslinking agents may be combined with other crosslinking agents such as polyisocyanate compounds, and hydrazine derivatives (paragraph [0015]).
JP920 further discloses that the substrate is a resin sheet or film inclusive of polyethylene terephthalate (paragraph [0019]), which meets the claimed polyester-based resin.
JP920 further discloses that a polymerization initiator is used (paragraph [0013]).
JP920 does not explicitly disclose an active energy ray-curable resin. JP920 does not explicitly disclose a photopolymerization initiator. JP920 does not explicitly disclose the anchoring strength properties of the adhesive sheet.
However, US498 discloses a pressure-sensitive adhesive sheet comprising a base material and a pressure-sensitive adhesive layer that is polymerizable and curable by an energy. US498 further discloses pressure-sensitive adhesive layer contains a base polymer and a multifunctional acrylate-based oligomer that has an energy-ray polymerizable carbon-carbon double bond. US498 further discloses that the multifunctional acrylate-based oligomer is inclusive of multifunctional alkyl acrylate and urethane acrylate oligomers (Claims 1 and 6-7).
US498 teaches that pressure-sensitive adhesives containing the multifunctional acrylate-based oligomer are excellent in follow-up properties and adhesive force particularly to surfaces having minute unevenness; furthermore such adhesives allow for a homogenous polymerization curing reaction (paragraph [0050]
US498 further discloses that the pressure-sensitive adhesive further contains a photopolymerization initiator to accelerate an efficient polymerization curing reaction of the adhesive, wherein said photopolymerization initiator is inclusive of 2-methyl-2-hydroxypropiophenone (paragraph [0064]).
Chemical Book provides evidence that 2-Hydroxy-2-methylpropiophenone is a clear liquid with a melting point of 4 °C and a boiling point of 102-103 °C (i.e., a liquid at 23 °C).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the multifunctional urethane acrylate-based oligomer of US498 in the pressure-sensitive adhesive composition of JP920. The motivation for doing so would have been to provide an adhesive with excellent follow-up and adhesive force to uneven surfaces and to provide an adhesive that allows for a homogenous polymerization curing reaction.
Further, it would have been obvious to use the photopolymerization initiator of US498 as the initiator desired by JP920. The motivation for doing so would have been that such photopolymerization initiators accelerate efficient polymerization curing reaction of the adhesive.
Regarding the claimed anchoring strength properties:
JP920 discloses that the (meth)acrylic alkyl ester monomers (a1) are inclusive of (meth)acrylic alkyl esters having an alkyl group with 4 to 12 carbon atoms inclusive of n-butyl, isobutyl, hexyl, heptyl, 2-ethylhexyl, isooctyl, isononyl, and isodecyl (paragraphs [0008-0009]).
In their original disclosure, Applicant discloses that the monomer component is inclusive of (meth)acrylic acid C1-C20 alkyl esters inclusive of butyl (meth)acrylate, isobutyl (meth)acrylate, hexyl (meth)acrylate, heptyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, isooctyl (meth)acrylate, isononyl (meth)acrylate, and isodecyl (meth)acrylate (see Specification at paragraph [0026]).
JP920, as cited above, discloses the same cross-linking agents recited by the claims.
US498 discloses the multifunctional alkyl acrylate and urethane acrylate oligomers cited above.
US498 further disclose that specific examples of the multifunctional alkyl acrylates include (meth)acrylates of branched aliphatic polyols such as trimethylolpropane tri(meth)acrylate, pentaerythritol tri(meth)acrylate, pentaerythritol tetra(meth)acrylate and condensates thereof (such as dipentaerythritol hexaacrylate) (paragraph [0057]).
US498 further discloses examples of the multifunctional alkyl acrylates are inclusive multifunctional polyester (meth)acrylates such as (meth)acrylated 1,4-butanediol (paragraph [0058]) (e.g., 1,4-butanediol di(meth)acrylate)
In their original disclosure, Applicant discloses that the active energy ray-curable resin is a UV-curable monomer and/or oligomer wherein the monomers that compose said oligomers are inclusive of urethane (meth)acrylate, trimethylolpropane tri(meth)acrylate, pentaerythritol tri(meth)acrylate, pentaerythritol tetra(meth)acrylate, dipentaerythritol hexaacrylate, and 1,4-butanediol di(meth)acrylate (see Specification at paragraph [0049]).
One of ordinary skill in the art would readily recognize that the scope of the prior art encompasses an embodiment that is substantially identical to Applicant’s claimed invention as mapped out above, and one of ordinary skill in the art would readily conclude that such an identical encompassed embodiment must have the same properties as the claimed composition (i.e., the same anchoring strength properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine US498 with JP920 to obtain the invention as specified by the instant claims.
Regarding instant claim 6:
The limitation “wherein the pressure-sensitive adhesive sheet is used for semiconductor wafer processing” is an intended use limitation.
While JP920 does not explicitly disclose the intended use limitation of the claim, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In the instant case, since the pressure-sensitive adhesive sheet of the prior art combination is substantially identical to that of the claims, as mapped above, it is deemed capable of performing the intended use, absent evidence to the contrary.
Answers to Applicant’s Arguments
In response to Applicant’s amendments, the grounds of rejection are altered to address the newly added limitations by the inclusion of the evidence provided by Chemical Book.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 07/02/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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