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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 8, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on October 2, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on August 13, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed 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.
Claim(s) 1, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Okuchi et al (JP 2013-211439).
In re claim 1, Okuchi et al discloses an adhesive sheet for back grinding of a semiconductor wafer having a convex part, comprising: a base material layer (i.e. 1a and 1b); and an adhesive layer (i.e. 2) provided on the base material layer, wherein: the adhesive layer comprises an opening part having a diameter smaller than a diameter of the semiconductor wafer (i.e. see at least Figures 1 and 2); the adhesive layer is adhered to an outer peripheral part of the semiconductor wafer so that the convex part of the semiconductor wafer is placed in the opening part (i.e. see at least Figure 4); the adhesive layer (i.e. 2) is configured so that the convex part is protected by the base material layer with the semiconductor wafer (i.e. 4) adhered to the adhesive layer; the base material layer comprises a cushion layer (i.e. 1a) and a surface treatment layer (i.e. 1b) provided thereon; the adhesive layer (i.e. 2) is provided on the surface treatment layer; the surface treatment layer is formed of an acrylic resin composition containing an acrylic resin (i.e. see at least paragraphs 0017-0030); the acrylic resin is cross-linked by light irradiation or heating (i.e. see at least paragraphs 0038-0041); and the adhesive layer is formed of an acrylic resin composition containing an acrylic resin (i.e. see at least paragraphs 0017-0030).
Furthermore, the claimed invention is a product-by-process claim and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In re claim 7, Okuchi et al discloses a base material sheet, comprising: a cushion layer (i.e. 1a); and a surface treatment layer (i.e. 1b) provided thereon, wherein: the surface treatment layer is formed of an acrylic resin composition containing an acrylic resin (i.e. see at least paragraphs 0017-0030); and the acrylic resin is cross-linked by light irradiation or heating (i.e. see at least paragraphs 0038-0041).
Furthermore, the claimed invention is a product-by-process claim and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In re claim 4, the claimed invention is a product-by-process claim and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Allowable Subject Matter
Claims 2, 3, 5, 6, and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY HO whose telephone number is (571)270-1432. The examiner can normally be reached 9AM - 5PM, Monday-Friday.
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/ANTHONY HO/Primary Examiner, Art Unit 2817