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 .
Note regarding Rejections
The following rejections are primarily based on the claim’s construction attempting to define a physical device structure through the results of destructive performance testing. Because the underlying physical structure (Substrate + Plasma Treatment + Additional Functional Layer) is disclosed in the prior art, and the specific structural boundaries (N/F, O/C ratios, haze, peeling) are only apparent post-destruction, the claims fail to meet the standards for definiteness, enablement, and non-obviousness.
Statement of Interpretation for Compact Prosecution
For the purposes of this examination and to facilitate compact prosecution, Claim 1 has been interpreted as a Product-by-Process or Result-Oriented claim. The "structure" of the device is interpreted by its physical material stack and the interfacial chemical modification. The Examiner interprets the functional limitations (300% stretching durability) as inherent properties of the physical structure when created using the disclosed materials. If the prior art discloses the same material stack and effective surface treatment, the resulting product is interpreted as being structurally identical.
Response to Arguments
Applicant's arguments filed 5/29/2026 have been fully considered but they are not persuasive.
A. New Matter
Applicant argues that amending Claims 2 and 5 to recite a “one finger” having area of "141mm^2" cures the indefiniteness of the manual testing parameter. Applicant states this calculation is supported by paragraph [112] of the specification (paragraph [0284] of PGpub) in view of an unmentioned, external statistical database (the AIST Japanese Hand Anthropometric Data List).
This amendment introduces New Matter and fails the written description requirement under 35 U.S.C. § 112(a). A review of paragraph [0112] reveals absolutely no mention of the AIST database, a "50th percentile Japanese hand size," or the precise geometric dimensions utilized to fabricate this range. Entry of this numerical limitation is “New Matter” because an ordinary artisan reading the application as filed would have had no disclosure or predictability regarding these precise claim boundaries.
B. 35 U.S.C. § 112(b)} Indefiniteness: Manual "Finger Rubbing" Test
Even if the "141mm2" surface area limitation is considered, the claim remains fatally indefinite. Applicant’s disclosure in paragraph [0112] instructs an operator to test the film by "rubbing while pressing with one finger."
By definition, pressure requires two controlled variables:
(Pressure} = (Force)/(Area)
While the amendment attempts to fix the Area, the specification completely omits the Force or downward load parameter (e.g., in Newtons), as well as critical constraints for velocity, duration, and friction baselines. Human manual application is highly variable. A tester can lightly graze or heavily mash the film across that 141 mm^2 area to entirely manipulate whether the antistatic layer passes or delaminates. Because the test relies on the subjective physical strength of an uncontrolled human operator, the boundaries of the claim are inherently subjective, unrepeatable, and fail to provide objective notice to the public.
C. 35 U.S.C. §112(b) Indefiniteness: Hardware-Dependent XPS Parameters
Applicant argues that because elemental ratios (O/C and N/F) are physical numbers, they are objective and definite. Applicant further concedes in the remarks that these precise analytical ratios "vary based on beam diameter and take-off angle" of the spectrometer hardware, but argues this variation is a factual matter to be settled during infringement litigation.
The Office flatly rejects the assertion that public notice boundaries can be deferred to active litigation. The claim language recites rigid, narrow elemental ratio ranges but completely fails to incorporate standard measurement configurations or baseline parameters. Because the exact same piece of film could step in or out of the claimed ranges depending entirely on the proprietary machine setup, beam configuration, or take-off angle employed by a competitor, the boundaries of the claim are impermissibly dubious.
D. 35 U.S.C. § 112(b) Indefiniteness: Destructive Testing
Applicant's philosophical argument that a commercial batch of film "inherently" exists in an infringing state prior to destructive testing fails under the legal standard for public notice. Under § 112(b), a claim must apprise competitors of its scope. If a competitor cannot verify whether a commercial, non-destroyed batch of product infringes without subjecting it to an ongoing, iterative cycle of destructive trial-and-error testing, the claim boundaries do not provide clear notice.
E. 35 U.S.C.§ 112(a) Enablement (Wands Factor Analysis)
The disclosure fails to enable the claimed invention because hitting the precise structural metrics of the independent claims forces a PHOSITA into undue experimentation. Evaluating the Wands factors:
The Nature and Predictability of the Art: Multilayer polymer chemistry and antistatic film delamination metrics are highly unpredictable art areas.
Amount of Direction/Guidance Provided: The specification completely lacks standardized testing methodologies, omitting downforce metrics for friction testing and instrument configuration parameters for surface chemistry analysis.
The disclosure merely documents a single historical "record of results" utilizing a specific laboratory technician and a specific proprietary machine config (Quantera PHI XPS), rather than providing a reproducible roadmap to the public.
Because the applicant's response introduces new matter and fails to establish an objective, repeatable protocol for testing the claimed boundaries, the substance of the previous rejections are maintained.
Claim Rejections - 35 USC § 112
Claims 2, 5 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant’s point to paragraphs 21, 36, 44-45, 53, 59, 62, 81 and 112 for support for the amendments. The originally filed written description fails to disclose a “filament rayon” and “one finger having an area of 141mm2”. The language is not found in the originally filed specification.
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 1-10 and subsequent depending claims 11-15 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.
Claims 1 & 5 are rejected as indefinite. Claim 1 defines the film's structure by a functional, post-test metric: a peeled area ratio of less than 5% after 300% uniaxial stretching. Because determining whether a sample meets this criterion requires its destruction, the claim fails to provide the reasonable certainty required by MPEP 2173.05(g) and is, therefore, indefinite.
A Person Having Ordinary Skill In The Art (PHOSITA) cannot discern if a product falls within the scope of the claim until it has been tested (i.e., stretched and peeled), meaning the claim lacks a definite physical boundary in its pre-stretched, commercially useful state. Consequently, the claim fails the Infringement Test; an identical product could be deemed non-infringing simply by not having been tested, resulting in a scenario where a product is simultaneously infringing and non-infringing.
Claims 2 sand 5 are rejected as indefinite (Friction and Pressure Problem):
These claims define the film by a "wiping test" using a "nonwoven fabric to which acetone is attached" under a "4 kg load," requiring that the change in haze (H2 - H1) >0.
The specification fails to define the surface area of the rubbing head applying the 4 kg load. Because pressure (P = Force/Area) is what creates mechanical abrasion (e.g. haze), a 4 kg load applied via a fine-point tip (high pressure) will produce vastly different results than a 4 kg load applied via a wide pad (low pressure). Therefore, the claim is indefinite.
The term "nonwoven fabric" is a broad category including materials of varying fiber types (polyester, cellulose, etc.) and densities. Without a specified industry standard or brand, the coefficient of friction is unknown. A film that "passes" with one fabric may "fail" with another. Therefore, the claim is indefinite.
Claims 3, 4, 6, 7, 8, 9, and 10 are rejected as indefinite as the measurement instrument is not clearly defined and objectively repeatable.
These claims define the substrate's surface by specific atomic ratios: O/C within 0.010 to 0.200 and N/F within 0.010 to 0.100.
While the specification provides some parameters for a "Quantera PHI" analyzer, it fails to provide a universal protocol for other XPS systems. XPS results are highly sensitive to spatial resolution, detector sensitivity, and the take-off angle. While the specification at paragraphs [0134]-[0174] provides specific parameters for a “Quantera PHI” XPS system, this disclosure actually highlights the indefiniteness of the claims. Because the claimed N/F and O/C ranges are not limited to a specific instrument in the claim language, and because these ratios vary based on beam diameter and take-off angle, a competitor cannot know if they infringe without using the exact same hardware configuration as the applicant. This lacks the objective clarity required by MPEP §2173.02.
A sample that measures a 0.010 N/F ratio on one machine (hitting the claimed boundary) may measure 0.009 on a differently calibrated system (falling out of bounds), rendering the claim scope "subjective" to the equipment used rather than "objective."
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10, 12-13, 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification fails to comply with the enablement requirement because it does not provide a predictable roadmap for practicing the invention, instead forcing a person of ordinary skill in the art (PHOSITA) into a "loop" of double guesswork which is then followed by destructive observational test (stretching/peeling and/or wiping).
The experimental data provided in the specification (e.g. Table 1), which lists specific plasma environments, pressures, and resulting atomic ratios. However, these tables represent a "record of results" rather than a functional "roadmap for manufacturing." While the tables show that certain parameters were successful in a controlled laboratory setting, they do not provide the necessary correlation between manufacturing inputs and universal measurement outputs required to enable the full scope of the claims.
Specifically, the disclosure requires the PHOSITA to navigate two levels of uncertainty. The tables provide broad examples for pressure and power, but omit the precise combinations of plasma setting ranges (e.g., exact gas flow ratios, specific wattage, and treatment duration) required to consistently hit the narrow N/F and O/C ratios claimed. Even if a user were to attempt to replicate the table's environment, the specification is silent on the fact that these results are inherently instrument-dependent. Because these chemical ratios fluctuate based on the specific geometry and calibration of the detector, the user must guess at how to calibrate their own equipment to match the applicant's proprietary data.
Consequently, the PHOSITA is trapped in a trial-and-error loop; they must guess at the manufacturing parameters, then guess at the instrument settings, and if the results do not match the table, they have no way of knowing which variable to adjust all while also perform a destructive test to verify “peeling”. This reliance on double guesswork to reach the claimed invention constitutes undue experimentation.
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.
Claim(s) 1-10, 12-13, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasai et al. (WO 2016093178 A1) in view of Sugamata et al. (US 20220119682 A1).
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Claim 1, 8, 9 & 10. Kasai et al. discloses a film comprising at least a substrate (Huang et al. Abstract- “a mold releasing base 2” – Kasai teaches specifically ETFE1 and other materials that are identical to the substrate materials disclosed in Applicant’s written description.) and an antistatic layer (Abstract - “antistatic layer 3 contains at least one antistatic agent selected from the group consisting of conductive polymers and conductive metal oxides” which is identical to the layer described in Applicant’s written description.).
As addressed above, Kasai explicitly discloses a "mold release film" comprising a "releasable substrate 2" and an "antistatic layer 3." The reference further describes the manufacture of this film by applying an "antistatic liquid" to one surface of the substrate and drying/crosslinking it. It would have been obvious to a person of ordinary skill in the art to combine these layers to solve the "problem of being easily charged" during the "production of a semiconductor package."
An adhesive layer on a surface of the antistatic layer opposite to the substrate, wherein the substrate comprises and ethylene tetrafluoroethylene copolymer (Kasai – “Examples of fluoroolefin polymers include ethylene-tetrafluoroethylene copolymer (ETFE), tetrafluoroethylene-hexafluoropropylene copolymer (FEP), tetrafluoroethylene-perfluoro (alkyl vinyl ether) copolymer (PFA), And tetrafluoroethylene-hexafluoropropylene-vinylidene fluoride copolymer (THV). A fluoroolefin polymer may be used individually by 1 type, and may use 2 or more types together.
As the fluoroolefin polymer, ETFE is particularly preferable because of its high elongation at high temperatures. ETFE is a copolymer having units based on TFE (hereinafter also referred to as “TFE units”) and units based on ethylene (hereinafter also referred to as “E units”).”)
the substrate has a thickness of 10 to 500 uM (Kasai - “The thickness of the releasable substrate 2 is preferably 12 to 100 μm, particularly preferably 25 to 75 μm”), the antistatic layer has a thickness of 0.05 to 3.0 um (Kasai – “The thickness of the antistatic layer 3 is preferably from 100 to 1,000 nm, particularly preferably from 200 to 800 nm. When the thickness of the antistatic layer 3 is not less than the lower limit of the above range, the antistatic layer 3 tends to be a continuous coating film, and excellent antistatic properties are easily obtained. If the thickness is not more than the upper limit of the above range, the antistatic layer 3 is unlikely to peel off.”).
Even though Kasai discloses the adhesive layer, Kasai may be silent upon the thickness of the adhesive layer. It would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the thickness through routine experimentation and optimization to obtain optimal or desired device performance because the thickness is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Regarding the claimed physical performance (Tape Peeling and Adhesion), Claim 1 requires a peeled area of "less than 5%" after a tape peeling test. Kasai renders this limitation obvious through its teaching on the "adhesiveness of the antistatic layer." Specifically, Kasai states that when the content of the antistatic agent is within a specific range, "the adhesiveness of the antistatic layer 3 and a mold release base material will be excellent."
In the Manufacturing Method, Kasai notes that if the thickness of the antistatic layer is not more than 1,000 nm, "the antistatic layer 3 is unlikely to peel off." Furthermore, to ensure the layer does not fail, the reference teaches "surface treatment" such as " corona treatment, plasma treatment, silane coupling agent coating, and adhesive application" to "improve the adhesion to the antistatic layer 3." A person of ordinary skill in the art would find it obvious to optimize the "resin binder" and "crosslinking" (e.g., using "isocyanate-based curing agents" or "polyfunctional aziridine" as described in Examples 1-13) to achieve the predictable result of high adhesion (less than 5% peeling) required for industrial handling. The structural components of Kasai are structured to achieve the claimed performance, therefore satisfying the full scope of the claimed invention. (see MPEP § 2114, Apparatus and Article Claims — Functional Language).
Regarding the claimed mechanical properties (Stretching/Elongation)
The claim requirement for "300% uniaxial stretching" is obvious over Kasai's emphasis on "mold followability" and "elongation at high temperatures." The reference specifically selects "ETFE" as a base material because it has "high elongation at high temperatures." The reference teaches that the film must have "sufficient strength" to "withstand the flow and pressure of the curable resin" and be "excellent in elongation."
Kasai further teaches that if the thickness of the substrate is within the preferred range (12 to 100 μm), "the release film 1 can be easily deformed and has excellent mold followability.", thereby disclosing it is flexible and able to flex to the form of a mold. The structural components of Kasai are formed of like material and structured to achieve the claimed performance, therefore satisfying the full scope of the claimed invention. (see MPEP § 2114, Apparatus and Article Claims — Functional Language).
Further, note testing the adhesion after stretching is a routine verification for a film intended to be "vacuum-sucked" and "deformed" into a mold cavity as described in the Method for Manufacturing a Semiconductor Package, and does not provide any further structural distinction over the prior art device structure.
As addressed above, Kasai provides the motivation to create a film with high adhesion and high elongation to prevent "cracking of the antistatic layer" and to ensure the "antistatic effect is sufficiently extended." Achieving a peeling ratio of less than 5% is the expected result of following the reference's explicit instructions to use "surface treatment" and "crosslinked resin binders" to ensure the layer is "unlikely to peel off."
Kasai teaches the film according to claim 1 as addressed above, however is silent upon the film further comprising an adhesive layer on a surface of the antistatic layer opposite to the substrate. Such a construction is well-known for films designed for use as antistatic tapes. Sugamata teaches an analogous film comprising a substrate/underlying layer 22 that undergoes plasma/corona treatment to improve properties, and a coating layer 32 (a resin layer) having antistatic properties [Sugamata ¶[0004-6]]. An adhesive layer 4 is disposed on the coating layer 32, allowing the film to function as an in-mold label [Sugamata ¶[0004-6]]. The teachings of Sugamata directly correspond to those of Kasai, as both describe an in-mold film. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Kasai’s in-mold film by including the adhesive layer taught by Sugamata, as applying a known technique to a known device, ready for improvement, to yield predictable results is considered obvious to one of ordinary skill in the art (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385).
Regarding wherein the O/C is within a range of 0.010 to 0.200 in surface chemical composition analysis of the substrate on an antistatic layer side by X-ray photoelectron spectroscopy; and/or wherein N/F is within a range of 0.010 to 0.100 in surface chemical composition analysis of the substrate on the antistatic layer side by X-ray photoelectron spectroscopy.
However, Kasai provides a clear motivation to modify the substrate surface, stating that "surface treatment may be performed" (such as "corona treatment" or "plasma treatment") specifically to "improve the adhesion to the antistatic layer." This treatment is functionally required to ensure the antistatic layer is "unlikely to peel off."
A PHOSITA, performing these treatments in ambient air (Absent specific gas requirements in the Kasai process, both procedures are assumed to take place in an ambient atmosphere, consistent with standard operating practice.), would recognize that the treatment intensity (power and duration) is a result-effective variable.
Regarding O/C ratio, introduction of oxygen via air-based corona treatment is the standard mechanism for increasing the oxygen-to-carbon (O/C) ratio, achieving a target wetting tension of "40 mN/m or more." The claimed range of 0.010 to 0.200 is the predictable outcome of optimizing this treatment to ensure sufficient bonding sites for the "resin binder."
Regarding the N/F ratio, a skilled artisan would expect nitrogen incorporation when treating a fluorine-rich substrate, such as the disclosed ETFE film, in a nitrogen-containing atmosphere. The claimed range of 0.010 to 0.100 represents a routine optimization of the nitrogen-to-fluorine ratio to achieve the surface activation levels taught by the prior art, which, like Kasai, aims to eliminate peeling.3. Routine Analytical Characterization
The use of "X-ray photoelectron spectroscopy" (XPS) to define these ranges does not impart clear patentability. The reference already identifies the target physical state ("unlikely to peel off" and "40 mN/m or more"). Quantifying this state using standard analytical chemical ratios (O/C and N/F) is merely a routine characterization of the surface conditions already necessitated by the prior art's manufacturing requirements.
However, Kasai provides a clear motivation to modify the substrate surface, stating that "surface treatment may be performed" (such as "corona treatment" or "plasma treatment") specifically to "improve the adhesion to the antistatic layer." This treatment is functionally required to ensure the antistatic layer is "unlikely to peel off."
A PHOSITA, performing these treatments in ambient air (Absent specific gas requirements in the Kasai process, both procedures are assumed to take place in an ambient atmosphere, consistent with standard operating practice.), would recognize that the treatment intensity (power and duration) is a result-effective variable.
Regarding O/C ratio, introduction of oxygen via air-based corona treatment is the standard mechanism for increasing the oxygen-to-carbon (O/C) ratio, achieving a target wetting tension of "40 mN/m or more." The claimed range of 0.010 to 0.200 is the predictable outcome of optimizing this treatment to ensure sufficient bonding sites for the "resin binder."
Regarding the N/F ratio, a skilled artisan would expect nitrogen incorporation when treating a fluorine-rich substrate, such as the disclosed ETFE film, in a nitrogen-containing atmosphere. The claimed range of 0.010 to 0.100 represents a routine optimization of the nitrogen-to-fluorine ratio to achieve the surface activation levels taught by the prior art, which, like Kasai, aims to eliminate peeling.3. Routine Analytical Characterization
The use of "X-ray photoelectron spectroscopy" (XPS) to define these ranges does not impart clear patentability. The reference already identifies the target physical state ("unlikely to peel off" and "40 mN/m or more"). Quantifying this state using standard analytical chemical ratios (O/C and N/F) is merely a routine characterization of the surface conditions already necessitated by the prior art's manufacturing requirements.
CLAIM 2. Kasai teaches the film according to claim 1, wherein a relation of (H2-H1)≥0 is satisfied when a wiping test is performed under the following conditions after 300% uniaxial stretching at 25° C., the wiping test is that: the film is wiped by rubbing the surface of the film on the antistatic layer side using a nonwoven fabric to which acetone is attached through 20 reciprocations with a load of 4 kg, and hazes before and after the wiping are measured at same position of the film, and a haze before the wiping is denoted by H1, and a haze after the wiping is denoted by H2 (Observing 'haze' is a subjective metric that lacks the precision needed to distinguish structural differences. The test procedure is also technically incomplete: it specifies a 4 kg load but omits the contact surface area, and does not define a particular “nonwoven fabric” with defined properties to achieve the results. Because pressure, the driver of abrasion, and depends on area, the test results are unreliable, and the resulting structure is not clearly defined. As such the claim does not provide any further structural distinction.)
Claims 3 and 4. Kasai teaches the film according to claim 1, however is silent upon wherein O/C is within a range of 0.010 to 0.200 in surface chemical composition analysis of the substrate on an antistatic layer side by X-ray photoelectron spectroscopy and/or the film according to claim 1, wherein N/F is within a range of 0.010 to 0.100 in surface chemical composition analysis of the substrate on the antistatic layer side by X-ray photoelectron spectroscopy.
However, Kasai provides a clear motivation to modify the substrate surface, stating that "surface treatment may be performed" (such as "corona treatment" or "plasma treatment") specifically to "improve the adhesion to the antistatic layer." This treatment is functionally required to ensure the antistatic layer is "unlikely to peel off."
A PHOSITA, performing these treatments in ambient air (Absent specific gas requirements in the Kasai process, both procedures are assumed to take place in an ambient atmosphere, consistent with standard operating practice.), would recognize that the treatment intensity (power and duration) is a result-effective variable.
Regarding O/C ratio, introduction of oxygen via air-based corona treatment is the standard mechanism for increasing the oxygen-to-carbon (O/C) ratio, achieving a target wetting tension of "40 mN/m or more." The claimed range of 0.010 to 0.200 is the predictable outcome of optimizing this treatment to ensure sufficient bonding sites for the "resin binder."
Regarding the N/F ratio, a skilled artisan would expect nitrogen incorporation when treating a fluorine-rich substrate, such as the disclosed ETFE film, in a nitrogen-containing atmosphere. The claimed range of 0.010 to 0.100 represents a routine optimization of the nitrogen-to-fluorine ratio to achieve the surface activation levels taught by the prior art, which, like Kasai, aims to eliminate peeling.3. Routine Analytical Characterization
The use of "X-ray photoelectron spectroscopy" (XPS) to define these ranges does not impart clear patentability. The reference already identifies the target physical state ("unlikely to peel off" and "40 mN/m or more"). Quantifying this state using standard analytical chemical ratios (O/C and N/F) is merely a routine characterization of the surface conditions already necessitated by the prior art's manufacturing requirements.
CLAIM 5. Kasai teaches the film comprising at least a substrate (Kasai et al. Abstract- “a mold releasing base 2” – Kasai teaches specifically ETFE and other materials that are identical to the substrate materials disclosed in Applicant’s written description.) and an antistatic layer (Abstract - “antistatic layer 3 contains at least one antistatic agent selected from the group consisting of conductive polymers and conductive metal oxides” which is identical to the layer described in Applicant’s written description.).
Kasai may be however is silent upon wherein a relation of (H2-H1)≥0 is satisfied when a wiping test is performed under the following conditions after 300% uniaxial stretching at 25° C., the wiping test is that: the film is wiped by rubbing a surface of the film on an antistatic layer side using a nonwoven fabric to which acetone is attached through 20 reciprocations with a load of 4 kg, and hazes before and after the wiping are measured at same position of the film, and a haze before the wiping is denoted by H1, and a haze after the wiping is denoted by H2.
As established regarding claims 1-4, the claimed testing processes fail to establish a non-obvious structural distinction over Kasai. Kasai expressly discloses the claimed device structure and surface treatments, which are intended to achieve the same improved adhesion between layers (i.e. mitigate peeling).
Claims 6 and 7. Kasai teaches the film according to claim 5, however is silent upon wherein O/C is within a range of 0.010 to 0.200 in surface chemical composition analysis of the substrate on an antistatic layer side by X-ray photoelectron spectroscopy and/or the film according to claim 1, wherein N/F is within a range of 0.010 to 0.100 in surface chemical composition analysis of the substrate on the antistatic layer side by X-ray photoelectron spectroscopy.
However, Kasai provides a clear motivation to modify the substrate surface, stating that "surface treatment may be performed" (such as "corona treatment" or "plasma treatment") specifically to "improve the adhesion to the antistatic layer." This treatment is functionally required to ensure the antistatic layer is "unlikely to peel off."
A PHOSITA, performing these treatments in ambient air (Absent specific gas requirements in the Kasai process, both procedures are assumed to take place in an ambient atmosphere, consistent with standard operating practice.), would recognize that the treatment intensity (power and duration) is a result-effective variable.
Regarding O/C ratio, introduction of oxygen via air-based corona treatment is the standard mechanism for increasing the oxygen-to-carbon (O/C) ratio, achieving a target wetting tension of "40 mN/m or more." The claimed range of 0.010 to 0.200 is the predictable outcome of optimizing this treatment to ensure sufficient bonding sites for the "resin binder."
Regarding the N/F ratio, a skilled artisan would expect nitrogen incorporation when treating a fluorine-rich substrate, such as the disclosed ETFE film, in a nitrogen-containing atmosphere. The claimed range of 0.010 to 0.100 represents a routine optimization of the nitrogen-to-fluorine ratio to achieve the surface activation levels taught by the prior art, which, like Kasai, aims to eliminate peeling.3. Routine Analytical Characterization
The use of "X-ray photoelectron spectroscopy" (XPS) to define these ranges does not impart clear patentability. The reference already identifies the target physical state ("unlikely to peel off" and "40 mN/m or more"). Quantifying this state using standard analytical chemical ratios (O/C and N/F) is merely a routine characterization of the surface conditions already necessitated by the prior art's manufacturing requirements.
CLAIM 12. Kasai teaches the film according to claim 1, wherein the substrate comprises at least one selected from the group consisting of a fluororesin, polymethylpentene, syndiotactic polystyre-ne, and a polycycloolefin (Kasai – “As the releasable transparent resin, fluororesin, polymethylpentene, syndiotactic polystyrene, mold release, in terms of excellent releasability, heat resistance at the sealing temperature of the semiconductor package (for example, 180 ° C.), and mold followability Of these, preferred are silicone resins. Of these, fluororesin, polymethylpentene, and syndiotactic polystyrene are preferable and fluororesin is particularly preferable in terms of excellent releasability. These resins may be used alone or in combination of two or more.”).
CLAIM 13. Kasai teaches the film according to claim 1, wherein the substrate comprises at least one selected from the group consisting of an ethylene-tetrafluoroethylene copolymer (ETFE),, a tetrafluoroethylene-hexafluoropropylene copolymer (FEP), a tetrafluoroethylene-perfluoro(alkyl vinyl ether) copolymer (PFA), and a tetrafluoroethylene-hexafluoropropylene-vinylidene fluoride copolymer (THV) (Kasai – “Examples of fluoroolefin polymers include ethylene-tetrafluoroethylene copolymer (ETFE), tetrafluoroethylene-hexafluoropropylene copolymer (FEP), tetrafluoroethylene-perfluoro (alkyl vinyl ether) copolymer (PFA), And tetrafluoroethylene-hexafluoropropylene-vinylidene fluoride copolymer (THV). A fluoroolefin polymer may be used individually by 1 type, and may use 2 or more types together.
As the fluoroolefin polymer, ETFE is particularly preferable because of its high elongation at high temperatures. ETFE is a copolymer having units based on TFE (hereinafter also referred to as “TFE units”) and units based on ethylene (hereinafter also referred to as “E units”).”).
CLAIM 15. Kasai teaches the according to claim 1, which is a release film used in a step of encapsulating a semiconductor device with a curable resin (Kasai – Abstract – Note: This limitation only understood as a statement of intended use, and does not provide a clear structural distinction over the prior art..
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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JARRETT J. STARK
Primary Examiner
Art Unit 2822
6/10/2026
/JARRETT J STARK/Primary Examiner, Art Unit 2898
1 Kasai et al. – “Examples of the releasable substrate 2 include those containing a releasable transparent resin (however, no antistatic agent is included).
As the releasable transparent resin, fluororesin, polymethylpentene, syndiotactic polystyrene, mold release, in terms of excellent releasability, heat resistance at the sealing temperature of the semiconductor package (for example, 180 ° C.), and mold followability Of these, preferred are silicone resins. Of these, fluororesin, polymethylpentene, and syndiotactic polystyrene are preferable and fluororesin is particularly preferable in terms of excellent releasability. These resins may be used alone or in combination of two or more.
As the fluororesin, a fluoroolefin polymer is preferable from the viewpoint of excellent releasability and heat resistance. The fluoroolefin polymer is a polymer having units based on a fluoroolefin. The fluoroolefin polymer may further have units other than the units based on the fluoroolefin.
Examples of the fluoroolefin include tetrafluoroethylene (hereinafter also referred to as “TFE”), vinyl fluoride, vinylidene fluoride, trifluoroethylene, hexafluoropropylene, chlorotrifluoroethylene, and the like. A fluoroolefin may be used individually by 1 type, and may use 2 or more types together.
Examples of fluoroolefin polymers include ethylene-tetrafluoroethylene copolymer (ETFE), tetrafluoroethylene-hexafluoropropylene copolymer (FEP), tetrafluoroethylene-perfluoro (alkyl vinyl ether) copolymer (PFA), And tetrafluoroethylene-hexafluoropropylene-vinylidene fluoride copolymer (THV). A fluoroolefin polymer may be used individually by 1 type, and may use 2 or more types together.
As the fluoroolefin polymer, ETFE is particularly preferable because of its high elongation at high temperatures. ETFE is a copolymer having units based on TFE (hereinafter also referred to as “TFE units”) and units based on ethylene (hereinafter also referred to as “E units”).
ETFE is preferably a polymer having TFE units, E units, and units based on a third monomer other than TFE and ethylene. It is easy to adjust the crystallinity of ETFE, and consequently the tensile properties of the releasable substrate 2, depending on the type and content of units based on the third monomer. For example, having a unit based on a third monomer (particularly a monomer having a fluorine atom) improves the tensile strength and elongation at high temperatures (particularly around 180 ° C.).”
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