DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on June 3, 2026 was received. No claim was amended or added. Claims 9-18 were canceled.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued January 7, 2026.
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.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Hirano (JP2017126735) in view of Kiuchi (US20040191510) and Suzuki (JP2021068877) or Kimura (JP2015093469A) on claims 1-8 are maintained.
Regarding claim 1, Hirano teaches a tape comprising substrate layer 12 and a pressure sensitive adhesive layer 13 (paragraphs 0031 and 0045-0048, see figures 1 and 2), wherein the tape has a tensile elongation (elongation at break) of 100% or more and an elastic modulus of 1GPa to 2.5Gpa (paragraph 0039), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Hirano does not explicitly teach the break elongation and elastic modulus of the tape remains the same after being heated at 230ºC for 80 seconds. However, the tape is made of solvent soluble polyimide, having an aliphatic unit with a carbon number of 3 or more interposed between aromatic units and the aliphatic unit contains a polyalkyleneoxy group having an alkylene group having about 1 to 10 carbon atoms (paragraph 0039), which is the same as the claimed solvent-soluble polyimide (see claims 6-8), thus, Hirano’s solvent soluble polyimide intrinsically has the same properties of maintaining the elongation at break and elastic modulus after heating at 230ºC for 80 seconds. In addition, Hirano teaches the solvent-soluble polyimide substrate is formed by a coating liquid of solvent soluble polyimide (pargraph 0037). MP17A (applicant’s solvent solution polyimide) forms coating liquid of solvent soluble polyimide is evidenced by Suzuki (paragraphs 0032-0034 table 1 and paragraph 0024, with polyimide with the aliphatic unit contains a polyalkyleneoxy group having an alkylene group having about 1 to 10 carbon atoms) and Kimura (example 1, paragraphs 0026-0028 and 0057). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07). Thus, it would be obvious to use the MP17A as the solvent soluble polyimide in light of teaching of Suzuki and Kimira. MP17A is the same solvent soluble polyimide as the instant application, thus, has the same properties of maintaining elastic modulus and elongation at break after heating after heating at 230ºC for 80 seconds
Hirano does not explicitly teach the adhesive layer is configured so that an adhesive force of the adhesive layer is decreased by curing the adhesive layer. However, Kiuchi teaches a method of forming a heat peelable double faced pressure sensitive adhesive sheet for semiconductor wafer or capacitor (abstract, paragraphs 0001 and 0009) and discloses the adhesive layer is radiation-curable pressure-sensitive adhesive which has adhesive strength and can be cured with a radiation (or energy ray), and which can come to have reduced adhesive force through curing with a radiation (paragraphs 0052, 0013). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pressure sensitive adhesive that has a decreased adhesive force after curing as suggested by Kiuchi in the method of Hirano in view of Suzuki or Kimura because Kiuchi teaches such pressure sensitive adhesive layer renders the tape being easily peeled off by heating at any desired time (paragraph 0013).
Regarding claim 2, Hirano teaches the substrate thickness governs the flexibility of the tape (paragraph 0025) with the example of thickness of 1 to 9µm (paragraphs 0025). Kiuchi teaches the thickness of the substrate is 1 to 3000µm (paragraph 0040), with the thickness being chosen for desired strength, flexibility and intended use (paragraph 0040). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the substrate in the process to yield the desired flexibility, strength and intended use of the tape. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 3, Kiuchi teaches the adhesive force after curing governs the ease of separation and recovery of the processed material (semiconductor wafer/) (paragraphs 0003, 0058-0059 and 0061). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the adhesive force after curing in the tape to yield the desired efficiency in separation and recovery of the processed material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 4, Hirano teaches a release film 19 is provided on the pressure sensitive adhesive surface of the pressure sensitive adhesive layer opposite to the substrate layer (paragraphs 0031, 0057, see figures 1 and 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a release film as suggested by Hirono in the tape of Masuda because Hirano teaches the release film for protecting the surface of the adhesive layer (paragraph 0031).
Regarding claim 5, Hirano teaches the tape is protective tape for FPC, which reads on the limitation of a semiconductor chip (paragraphs 0001 and 0030).
Regarding claim 6, Hirano teaches the substate layer contains a solvent-soluble polyimide (paragraph 0038).
Regarding claim 7, Hirano teaches the substrate layer contains a polyimide resin having an aliphatic unit with a carbon number of 3 or more interposed between aromatic units (paragraph 0039).
Regarding claim 8, Hirono teaches the aliphatic unit contains a polyalkyleneoxy group having an alkylene group having about 1 to 10 carbon atoms (paragraph 0039).
The claim rejection under 35 U.S.C. 103 as being unpatentable over Hirano (JP2017126735) in view Suzuki (JP2021068877) or Kimura (JP2015093469A) on claim 19 is maintained.
Regarding claim 19, Hirano teaches a tape comprising substrate layer 12 and a pressure sensitive adhesive layer 13 (paragraphs 0031 and 0045-0048, see figures 1 and 2), wherein the tape has a tensile elongation (elongation at break) of 100% or more and an elastic modulus of 1GPa to 2.5Gpa (paragraph 0039), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Hirano does not explicitly teach the break elongation and elastic modulus of the tape remains similar (at least 90% of its elongation at beatk or elastic modulus increase by no more than 0.4 GPa) after being heated at 230ºC for 80 seconds. However, the tape is made of solvent soluble polyimide, having an aliphatic unit with a carbon number of 3 or more interposed between aromatic units and the aliphatic unit contains a polyalkyleneoxy group having an alkylene group having about 1 to 10 carbon atoms (paragraph 0039), which is the same as the claimed solvent-soluble polyimide (see claims 6-8), thus, Hirano’s solvent soluble polyimide intrinsically has the same properties of maintaining the elongation at break and elastic modulus after heating at 230ºC for 80 seconds. In addition, Hirano teaches the solvent-soluble polyimide substrate is formed by a coating liquid of solvent soluble polyimide (pargraph 0037). MP17A is forms coating liquid of solvent soluble polyimide is evidenced by Suzuki (paragraphs 0032-0034 table 1 and paragraph 0024, with polyimide with the aliphatic unit contains a polyalkyleneoxy group having an alkylene group having about 1 to 10 carbon atoms) and Kimura (example 1, paragraphs 0026-0028 and 0057). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07).Thus, it would be obvious to use the MP17A as the solvent soluble polyimide in light of teaching of Suzuki and Kimira. MP17A is the same solvent soluble polyimide as the instant application, thus, has the same properties of maintaining elastic modulus and elongation at break after heating after heating at 230ºC for 80 seconds similar (at least 90% of its elongation at beatk or elastic modulus increase by no more than 0.4 GPa).
The claim rejection under 35 U.S.C. 103 as being unpatentable over Hirano (JP2017126735) in view Suzuki (JP2021068877) or Kimura (JP2015093469A) as applied to claim 19 above, and further in view of Kimura (JP2015093469A), on claim 20 is maintained.
Regarding claim 20, Hirano teaches all limitations of this claim, except the adhesive force of the adhesive layer after being heated. However, Kiuchi teaches a method of forming a heat peelable double faced pressure sensitive adhesive sheet for semiconductor wafer or capacitor (abstract, paragraphs 0001 and 0009) and discloses the adhesive layer is radiation-curable pressure-sensitive adhesive which has adhesive strength and can be cured with a radiation (or energy ray), and which can come to have reduced adhesive force through curing with a radiation (paragraphs 0052, 0013). Kiuchi teaches the adhesive force after curing governs the ease of separation and recovery of the processed material (semiconductor wafer/) (paragraphs 0003, 0058-0059 and 0061). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the adhesive force after curing in the tape to yield the desired efficiency in separation and recovery of the processed material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pressure sensitive adhesive that has a decreased adhesive force after curing as suggested by Kiuchi in the method of Hirano in view of Suzuki or Kimura because Kiuchi teaches such pressure sensitive adhesive layer renders the tape being easily peeled off by heating at any desired time (paragraph 0013).
Response to Arguments
Applicant's arguments filed on June 3, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
There is not motivation to modify Hirano to include an adhesive layer “configured so that an adhesive force of the adhesive layer is decreased by curing the adhesive layer” from Kiuchi
The tape elongation at beak and elastic modules are not inherent.
In response to Applicant’s arguments, please consider the following comments:
Hirano does not teach away from an adhesive layer “configured so that an adhesive force of the adhesive layer is decreased by curing the adhesive layer as the claim does not specify degree of the decrease of the adhesive force, thus any level of decrease in adhesiveness after the curing would read on the claim limitation. The claim also does not specify the curing temperature or duration, it would be reasonably expected that any adhesive after extensive curing (high temperature and long duration), the adhesiveness would decrease due to decomposition or degradation. Thus, Hirano’s adhesive intricially is configured so that an adhesive force of the adhesive layer is decreased by curing the adhesive layer. Nevertheless, Kiuchi is included to show a heat-peelable pressure sensitive adhesive sheet that is used for protecting electronic parts during processing (abstract, paragraphs 0001 and 0009), which has similar function as Hirano’s coverlay film (paragraphs 0002 and 0023). While Hirano requires the coverlay film to bonded to the FPC during the FPC processing, Hirano does not explicitly require the film to be permanently bonded to the FPC as argued by the Applicant. Particularly, Hirano teaches the adhesive to have an adhesive strength to be 5 to 30N/inch, which includes a upper limit of how much adhesiveness is required, thus, Hirano does not indicate the adhesive is required to permanently attached to the FPC. Thus, Kiuchi does not teach away from Hirano and the substitution does not defeat Hirano’s intended purpose (protecting electronic component during processing). Kiuchi’s adhesive reduced in adhesiveness upon curing (pargraph 0052), and further loses the adhesiveness during heat treatment (paragraphs 0013 and 0125) for the benefit of easy peeling without fouling the adherend (paragraph 0009), such benefit appears to be applicable to Hirano’s coverlay film as such film is used for processing the FPC during the processing. Since Kiuchi teaches the heating temperature depends on the expansion initiation temperature of the heat expandable microspheres in the adhesive layer (paragraph 0125), it would be obvious to one of ordinary skill in the art to choose the heat expandable microspheres with higher expansion initiation temperature so that the adhesive can withstand the higher temperature process of Hirano but still able to be peel off easily with even higher temperature treatment. Regarding the argument of Hirano’s adhesive is flame retardant thermosetting adhesive, such disclosure is merely an example. It is well settled that nonpreferred and alternative embodiments constitute prior art and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 II).
As discussed above, Hirano in view of Kiuchi and Suzuki (JP2021068877) or Kimura (JP2015093469A) teaches the tape as claimed with similar material and thickness (the substrate and the adhesive layer), thus, the elongation at break and elastic modules are intrinsic (including after being heated at 230ºC for 80secods). The argument regarding Suzuki’s heat treatment is irrelevant as the heating temperature and duration are different from the claim.
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.
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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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