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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/28/2026 has been entered.
Response to Amendment
The Amendments filed 04/30/2026 responsive to the Office Action filed 03/11/2026 has been entered. Claims 1, 4, 9 and 16 have been amended. New claim 20 has been added. Claims 9-19 maintain withdrawn. Claims 1-20 are pending in this application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/17/2026 has been considered by the examiner.
Response to Arguments
Applicant's arguments, filed 04/30/2026 in page 7, with respect to the amendments in claim 1 have been considered. Due to the amendments, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kogure et al. (JPH0536826A_Machine Translation) further in view of Qian et al. (US 9,064,806).
Applicant’s arguments, see Amendment, filed 04/30/2026 in pages 7-10, with respect to claim 1 under 103 rejection have been fully considered but are not persuasive.
Applicant argues that “Figure 1 of the Kogure et al. reference depicts the adhesive layer 3 as being roughly the same thickness as the substrate 2. Accordingly, one of ordinary skill in the art would assume that the adhesive layer 3 would, like the substrate 2, be approximately within the range of between 10 and 300 m (i.e., between 0.01 mm and 0.3 mm). Applicant notes that the lower limit of the claimed resin member thickness of 10 mm is about 33 times the upper limit of 0.3 mm of the disclosed thickness of the adhesive layer 3 of Kogure, and that the lower limit of the claimed resin member thickness of 10 mm is 1000 times the lower limit of 0.01 mm of the disclosed thickness of the adhesive layer 3. Applicant respectfully submits that one of ordinary skill in the art would not have considered it obvious to have made the adhesive layer 3 of Kogure between 33 and 1000 times thicker than the associated substrate 2.” (pages 8-9)
These arguments are found to be unpersuasive because:
Kogure teaches the thicknesses of the substrate 2 and radiation attenuation layer 4 (Pa [0012] and [0037]), but does not teach the thickness of the adhesive layer 3. Even if Fig. 1 of Kogure depicts the adhesive layer 3 as being roughly the same thickness as the substrate 2, that is just how it appears in the figure, but the one cannot conclude that the adhesive layer 3 actually has the same thickness as the substrate. The existence of obviousness of making the adhesive layer 3 with the same thickness as the substrate 2 does not mean that Kogure teaches away the greater thickness of the adhesive layer 3 than the thickness of the substrate 2.
Kogure teaches that since the expansion rate of the adhesive layer in the non-radiation attenuating portion is low and the expansion rate of the adhesive layer in the radiation attenuating portion does not decrease significantly, even when expanding, the adhesive layer in the non-radiation attenuating portion is not preferentially stretched, making it easier to obtain the desired chip spacing (Pa [0040]). Thus, one would have found it obvious to select the optimum thickness of the adhesive layer by routine experimentation in order to allow the layer to be expanded in Kogure’s expanding step without tearing and make it easier to obtain the desired chip spacing.
From further search and reconsideration, Examiner has found a new reference (Aruga et al., US 2023/0278260) which makes the claims 5-8 unpatentable in view of Kogure et al. (JPH0536826A). Thus, the indication of allowable subject matter for claim 5 has been withdrawn.
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.
Claims 1-4 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kogure et al. (JPH0536826A_Machine Translation) in view of Qian et al. (US 9,064,806) (All of record).
With respect to claim 1, Kogure teaches a resin member (“an adhesive sheet”) for supporting a workpiece (“the adhesive sheet for wafer attachment”, Pa [0008]),
wherein the resin member (“an adhesive layer”) has urethane linkages deriving from a reaction between a polyether polyol and an aliphatic isocyanate (“the adhesive sheet for wafer attachment…comprises a substrate and an adhesive layer…a radiation attenuating layer”, “the adhesive layer comprises an adhesive and a radiation-polymerizable compound”, Pa [0008]; “urethane acrylate-based oligomers can also be used as the radiation-polymerizable compound. The urethane acrylate oligomer is obtained by reacting a terminated isocyanate urethane prepolymer obtained by reacting a polyol compound such as a polyester type or polyether type with a polyvalent isocyanate compound”, Pa [0017]).
Kogure does not explicitly disclose the thickness of the adhesive layer 3. Kogure further teaches that since the expansion rate of the adhesive layer in the non-radiation attenuating portion is low and the expansion rate of the adhesive layer in the radiation attenuating portion does not decrease significantly, even when expanding, the adhesive layer in the non-radiation attenuating portion is not preferentially stretched, making it easier to obtain the desired chip spacing (Pa [0040]). Thus, one would have found it obvious to select the optimum thickness of the adhesive layer by routine experimentation in order to allow the layer to be expanded in Kogure’s expanding step without tearing and make it easier to obtain the desired chip spacing, since it has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Kogure does not explicitly disclose that the resin member also includes a crosslinking agent.
In the same field of endeavor, a polishing pad, Qian teaches that isocyanate terminated urethane prepolymers for use as the polishing layer prepolymer and as the window prepolymer preferably comprise: a reaction product of ingredients, comprising: a polyfunctional isocyanate and a prepolymer polyol, polyfunctional isocyanate is aliphatic polyfunctional isocyanates, and the prepolymer polyol is polyether polyols with dipropylene glycol (co 10 li 30-37, 53-54, 63).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kogure with the teachings of Qian to provide dipropylene glycol with aliphatic polyfunctional isocyanates and polyether polyols in order to obtain the isocyanate terminated urethane prepolymers by reaction.
It is noted that the limitation “within a recess formed in a frame body of a holding table” in lines 1-2 is an intended use since the resin member taught by the prior art is capable of being used in the claimed purpose, since the Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962), and the Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
With respect to claim 2, Kogure as applied to claim 1 above further teaches that as the substrate 2, a substrate having radiation transparency is used (Pa [0011]), by including a radiation-polymerizable compound in the adhesive layer as described above, the adhesive strength can be reduced by irradiating the adhesive layer with radiation after cutting and separating the wafer (Pa [0016]), and the radiation transmittance of such a radiation attenuating layer is 1 to 90% (Pa [0038]). Thus, one would have found it obvious to choose the optimum transmittance of the adhesive sheet for light of a wavelength to be used in order to sufficiently reduce the adhesive strength by irradiating the adhesive layer with radiation after cutting and separating the wafer.
With respect to claim 3, Kogure as applied to claim 2 above further teaches that it is preferable to use a substrate having a Young's modulus of about 10 2 to 10 4 Kg / cm 2 (Pa [0011]) and the Young's modulus of this radiation attenuating layer is 1 x 10 2 to 5 x 10 4 kg/cm and does not affect the elongation of the substrate and adhesive layer in the expanding step (Pa [0038]). Thus, one would have found it obvious to choose the optimum mechanical property of the adhesive sheet in order to prevent the elongation of the substrate and adhesive layer from being affected in the expanding step.
With respect to claim 4, the combination as applied to claim 3 above further teaches that the aliphatic isocyanate is hexamethylene diisocyanate (Kogure: “by mixing an isocyanate-based curing agent into the above-mentioned pressure sensitive adhesive, the initial adhesive strength can be set to any desired value...Specific examples of such curing agents include…hexamethylene diisocyanate”, Pa [0031]; Qian: “Polyfunctional isocyanate used in the preparation of the isocyanate terminated urethane prepolymers is … hexamethylene diisocyanate”, co 10 li 34-35, 43-44), and the crosslinking agent comprises dipropylene glycol (co 10 li 63).
With respect to claim 20, Qian as applied in the combination regarding claim 1 above teaches that the crosslinking agent comprises dipropylene glycol (co 10 li 63).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Aruga et al. (US 2023/0278260) in view of Kogure et al. (JPH0536826A_Machine Translation-of record).
With respect to claim 5, Aruga teaches a dividing apparatus that divides a workpiece formed with division start points along streets, along the streets (“a dividing apparatus that divides the wafer 13 included in the frame unit 11, at any one of the plurality of projected dicing lines 17 a and 17 b.”, Pa [0036]), the dividing apparatus comprising:
a resin member (“support member 21”, Pa [0032]) that supports the workpiece (Pa [0032]-[0033]);
a pressing member (“a pressing section 12”) that presses the workpiece supported by the resin member (“the wafer 13 is to be pressed by the pressing section 12”, Pa [0065] and Fig. 4C); and
an imaging unit that images the workpiece through the resin member (“a camera 36 b that is disposed below the X-axis moving table 4 and the holding table 6.”, Pa [0062]; “The camera 36 b forms an image by imaging a lower surface side of the wafer 13.”, Pa [0063]).
Aruga further teaches that the support member 21 includes, for example, a film-like base layer having flexibility and an adhesive layer (glue layer) that is provided on one surface of the base layer (surface on the wafer 13 side), each of the base layer and the adhesive layer is composed of a material that allows visible light to pass through, specifically, the base layer is composed of polyolefin (PO), polypropylene (PP), polyethylene terephthalate (PET), polyvinyl chloride (PVC), or polystyrene (PS), for example, and in addition, the adhesive layer is composed of ultraviolet curable silicon rubber, an acrylic material, or an epoxy material, for example (Pa [0032]-[0033]), but does not explicitly teach that the resin member has urethane linkages deriving from a reaction between a polyether polyol and an aliphatic isocyanate.
In the same field of endeavor, an adhesive sheet for adhering a wafer used when cutting and separating a semiconductor wafer into small pieces, Kogure teaches that the adhesive sheet for wafer attachment comprises a substrate, an adhesive layer and a radiation attenuating layer, the adhesive layer comprises an adhesive and a radiation-polymerizable compound (Pa [0008]), urethane acrylate-based oligomers can also be used as the radiation-polymerizable compound, the urethane acrylate oligomer is obtained by reacting a terminated isocyanate urethane prepolymer obtained by reacting a polyol compound such as a polyester type or polyether type with a polyvalent isocyanate compound (Pa [0017]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Aruga with the teachings of Kogure to substitute Kogure’s adhesive sheet for Aruga’s support member for the purpose of adhering a wafer used when cutting and separating a semiconductor wafer into small pieces.
With respect to claim 6, Kogure as applied to claim 5 above further teaches that as the substrate 2, a substrate having radiation transparency is used (Pa [0011]), by including a radiation-polymerizable compound in the adhesive layer as described above, the adhesive strength can be reduced by irradiating the adhesive layer with radiation after cutting and separating the wafer (Pa [0016]), and the radiation transmittance of such a radiation attenuating layer is 1 to 90% (Pa [0038]). Thus, one would have found it obvious to choose the optimum transmittance of the adhesive sheet for light of a wavelength to be used in order to sufficiently reduce the adhesive strength by irradiating the adhesive layer with radiation after cutting and separating the wafer.
With respect to claim 7, Kogure as applied to claim 6 above further teaches that it is preferable to use a substrate having a Young's modulus of about 10 2 to 10 4 Kg / cm 2 (Pa [0011]) and the Young's modulus of this radiation attenuating layer is 1 x 10 2 to 5 x 10 4 kg/cm and does not affect the elongation of the substrate and adhesive layer in the expanding step (Pa [0038]). Thus, one would have found it obvious to choose the optimum mechanical property of the adhesive sheet in order to prevent the elongation of the substrate and adhesive layer from being affected in the expanding step.
With respect to claim 8, Kogure as applied to claim 7 above further teaches that the aliphatic isocyanate is hexamethylene diisocyanate (“by mixing an isocyanate-based curing agent into the above-mentioned pressure sensitive adhesive, the initial adhesive strength can be set to any desired value...Specific examples of such curing agents include…hexamethylene diisocyanate”, Pa [0031]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached on 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742
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