DETAILED ACTION
Pending Claims
Claims 1-6 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yonezaki (US 2012/0276376 A1) in view of Goodrich et al. (US 2019/0112435 A1).
Regarding claims 1-6, Yonezaki discloses: (1) a pressure-sensitive adhesive sheet (Abstract; paragraphs 0006-0024), comprising: a base material (paragraphs 0075-0078); and a pressure-sensitive adhesive layer (paragraphs 0028-0074) formed of
a water-dispersed pressure-sensitive adhesive composition including a water-dispersed acrylic polymer (paragraphs 0029-0052: “acrylic emulsion polymer A”), and
an active energy ray-curable resin (paragraphs 0053-0070: “electron beam reactive isocyanate compound B”);
(4) wherein the water-dispersed acrylic polymer is a polymer obtained by emulsion polymerization using a reactive surfactant having a radically polymerizable functional group (paragraphs 0041-0042 & 0045-0046);
(5) wherein the active energy ray-curable resin contains urethane (meth)acrylate (paragraphs 0062-0064); and
(6) wherein the pressure-sensitive adhesive sheet is used for semiconductor wafer processing (paragraph 0097: “production of a microfabricated component such as semiconductor”).
The pressure-sensitive adhesive of Yonezaki is initially heated/dried and subsequently irradiated with an electron beam to react their electron beam reactive isocyanate compound B, which enhances the anchoring force to the substrate (see paragraphs 0006-0014). Yonezaki fails to explicitly disclose a pressure-sensitive adhesive layer including: (1) a photopolymerization initiator.
Goodrich et al. disclose a similar composition (see paragraphs 0002 & 0012-0016) formulated with a water-based acrylic emulsion (see paragraphs 0023-0026) and (meth)acrylate monomer or oligomer (see paragraphs 0027-0030), which is applied to a substrate (see paragraph 0035). Similar to Yonezaki, this formulation allows for initial drying and subsequent electron beam reaction of their (meth)acrylate monomer or oligomer (see paragraphs 0021, 0031 & 0037-0038). Furthermore, Goodrich et al. establish that it is recognized in the art to alternatively provide UV-curability to this type of formulation by adding a photoinitiator (see paragraphs 0031 & 0038).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulae the pressure-sensitive adhesive layer of Yonezaki with a photoinitiator because: (a) the pressure-sensitive adhesive of Yonezaki is initially heated/dried and subsequently irradiated with an electron beam to react their electron beam reactive isocyanate compound B, which enhances the anchoring force to the substrate; (b) Goodrich et al. disclose a similar composition formulated with a water-based acrylic emulsion and (meth)acrylate monomer or oligomer, which is applied to a substrate; (c) similar to Yonezaki, the formulation of Goodrich et al. allows for initial drying and subsequent electron beam reaction of their (meth)acrylate monomer or oligomer; and (d) Goodrich et al. further establish that it is recognized in the art to alternatively provide UV-curability to this type of formulation by adding a photoinitiator.
The teachings of Yonezaki and Goodrich et al. fail to disclose that the pressure-sensitive adhesive sheet resulting from their combined teachings has:
(1-6) a pressure-sensitive adhesive strength maintenance ratio of 75% or more;
(2) a pressure-sensitive adhesive strength after UV irradiation of 0.2 N/20 mm or less; and
(3) a pressure-sensitive adhesive strength after immersion in water at 23°C for 30 minutes of 5.0 N/20 mm or more.
However, the skilled artisan would have expected the pressure-sensitive adhesive sheet resulting from the combined teachings of {Yonezaki and Goodrich et al.} to obviously embrace embodiments capable of satisfying these adhesive strength properties because the pressure-sensitive adhesive sheet resulting from the combined teachings of {Yonezaki and Goodrich et al.} obviously satisfies all of the material/chemical limitations of the claimed invention.
Therefore, the skilled artisan would have expected the pressure-sensitive adhesive sheet resulting from the combined teachings of {Yonezaki and Goodrich et al.} to obviously embrace embodiments capable of satisfying the instantly claimed adhesive strength properties because: the pressure-sensitive adhesive sheet resulting from the combined teachings of {Yonezaki and Goodrich et al.} obviously satisfies all of the material/chemical limitations of the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/430,970 (US 2024/0271013 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1-3 and 5, copending claim 6 discloses: (1) a pressure-sensitive adhesive sheet (see claim 6, which is dependent from claim 1), comprising: a base material (see claim 6); and a pressure-sensitive adhesive layer (see claim 6) formed of a water-dispersed pressure-sensitive adhesive composition including a water-dispersed acrylic polymer (see claim 1), an active energy ray-curable resin (see claim 1), and a photopolymerization initiator (see claim 1); and (5) wherein the active energy ray-curable resin contains urethane (meth)acrylate (see claim 1).
The copending claim fails to disclose that the pressure-sensitive adhesive sheet has:
(1-3 & 5) a pressure-sensitive adhesive strength maintenance ratio of 75% or more;
(2) a pressure-sensitive adhesive strength after UV irradiation of 0.2 N/20 mm or less; and
(3) a pressure-sensitive adhesive strength after immersion in water at 23°C for 30 minutes of 5.0 N/20 mm or more.
However, the skilled artisan would have expected the pressure-sensitive adhesive sheet of the copending claim to obviously embrace embodiments capable of satisfying these adhesive strength properties because the pressure-sensitive adhesive sheet of the copending claim satisfies all of the material/chemical limitations of the claimed invention.
Regarding claim 6, the copending claim fails to explicitly disclose: (6) wherein the pressure-sensitive adhesive sheet is used for semiconductor wafer processing. However, it has been found that 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.
Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of copending Application No. 18/430,964 (US 2024/0271020 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1-3 and 6, copending claims 6-7 disclose: (1) a pressure-sensitive adhesive sheet (see claims 6-7, where claim 6 is dependent from claim 1), comprising: a base material (see claims 6-7); and a pressure-sensitive adhesive layer (see claims 6-7) formed of a water-dispersed pressure-sensitive adhesive composition including a water-dispersed acrylic polymer (see claim 1), an active energy ray-curable resin (see claim 1), and a photopolymerization initiator (see claim 1); and (6) wherein the pressure-sensitive adhesive sheet is used for semiconductor wafer processing (see claim 7).
The copending claim fails to disclose that the pressure-sensitive adhesive sheet has:
(1-3 & 6) a pressure-sensitive adhesive strength maintenance ratio of 75% or more;
(2) a pressure-sensitive adhesive strength after UV irradiation of 0.2 N/20 mm or less; and
(3) a pressure-sensitive adhesive strength after immersion in water at 23°C for 30 minutes of 5.0 N/20 mm or more.
However, the skilled artisan would have expected the pressure-sensitive adhesive sheet of the copending claims to obviously embrace embodiments capable of satisfying these adhesive strength properties because the pressure-sensitive adhesive sheet of the copending claims satisfies all of the material/chemical limitations of the claimed invention.
Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-8 of copending Application No. 18/430,933 (US 2024/0263056 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1-3 and 6, copending claims 6-8 disclose: (1) a pressure-sensitive adhesive sheet (see claim 6-8, where claim 6 is dependent from claim 1), comprising: a base material (see claims 6-8); and a pressure-sensitive adhesive layer (see claim 6-8) formed of a water-dispersed pressure-sensitive adhesive composition including a water-dispersed acrylic polymer (see claim 1), an active energy ray-curable resin (see claim 1), and a photopolymerization initiator (see claim 1); and (6) wherein the pressure-sensitive adhesive sheet is used for semiconductor wafer processing (see claim 8).
The copending claims fail to disclose that the pressure-sensitive adhesive sheet has:
(1-3 & 6) a pressure-sensitive adhesive strength maintenance ratio of 75% or more;
(2) a pressure-sensitive adhesive strength after UV irradiation of 0.2 N/20 mm or less; and
(3) a pressure-sensitive adhesive strength after immersion in water at 23°C for 30 minutes of 5.0 N/20 mm or more.
However, the skilled artisan would have expected the pressure-sensitive adhesive sheet of the copending claims to obviously embrace embodiments capable of satisfying these adhesive strength properties because the pressure-sensitive adhesive sheet of the copending claims satisfies all of the material/chemical limitations of the claimed invention.
Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-9 of copending Application No. 18/430,956 (US 2024/0263047 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1-3 and 6, copending claims 6-9 disclose: (1) a pressure-sensitive adhesive sheet (see claim 6-9, where claim 6 is dependent from claim 1), comprising: a base material (see claims 6-9); and a pressure-sensitive adhesive layer (see claim 6-9) formed of a water-dispersed pressure-sensitive adhesive composition including a water-dispersed acrylic polymer (see claim 1), an active energy ray-curable resin (see claim 1), and a photopolymerization initiator (see claim 1); and (6) wherein the pressure-sensitive adhesive sheet is used for semiconductor wafer processing (see claim 9).
The copending claims fail to disclose that the pressure-sensitive adhesive sheet has:
(1-3 & 6) a pressure-sensitive adhesive strength maintenance ratio of 75% or more;
(2) a pressure-sensitive adhesive strength after UV irradiation of 0.2 N/20 mm or less; and
(3) a pressure-sensitive adhesive strength after immersion in water at 23°C for 30 minutes of 5.0 N/20 mm or more.
However, the skilled artisan would have expected the pressure-sensitive adhesive sheet of the copending claims to obviously embrace embodiments capable of satisfying these adhesive strength properties because the pressure-sensitive adhesive sheet of the copending claims satisfies all of the material/chemical limitations of the claimed invention.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
June 20, 2026
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