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 .
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 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Priewasser (US 2018/0247870), in view of Goto (WO 2108/181240), and further in view of Takahashi (JP2007238844).
Regarding claims 1 and 2, Priewasser discloses a protective sheet (5) for back griding of a semiconductor wafer (0009) the wafer having a convex part (Fig. 1; protrusions 14).
The protective sheet comprising a base sheet (7; instant barrier layer), cushioning layer (13; instant cushion layer) and an adhesive layer (9) provided on the base material opposite the side of the adhesive layer (Fig. 3, 0123). The adhesive layer having an opening part with a diameter smaller than a diameter of the semiconductor wafer, the adhesive adhered to an outer peripheral part of the semiconductor wafer, and the projections are placed within the opening and protected by the base material layer (Fig. 6).
Priewasser does not disclose cushion layer configured of a thermoplastic resin having a softening temperature of 45 to 200oC measured based on JIS K 7206 and a melting point of 60-200oC as measured based on JIS K 7121, and the base material layer having an oxygen permeability at 25oC and RH0% measured by JIS K 7126-2 of 1000 ml/m2 24h atm or lower.
Regarding the cushion layer, Goto, in the analogous field of adhesive tapes for semiconductor wafers (0001), teaches and adhesive tape comprising an intermediate resin layer having a melting point and Vicat softening point of 40 to 90oC (0026), overlapping the claimed softening temperature of 45 to 200oC and melting point of 60 to 200oC. Suitable example resins include thermoplastic resins such as ethylene-based copolymers and methacrylic acid esters (0028-0030).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the cushioning layer of Priewasser to include a thermoplastic having a melting point and Vicat softening point of 40 to 90oC, as taught by Goto, for thickness uniformity and conformability to the surface shape of the semiconductor wafer (0026).
Regarding the base layer, Takahashi, in the analogous field of adhesive sheets for semiconductor wafer processing (0001), discloses an adhesive sheet comprising a substrate film with an oxygen permeability of 100 cc/m2 1 day atm or less (0019), overlapping the claimed oxygen permeability of 1000 ml/m2 24 h atm or lower.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the base material layer of Priewasser to have an oxygen permeability of 100 cc/m2 1 day atm or less as taught by Takahashi, improving storage stability and reducing hardening of the adhesive layer (0006).
Regarding the overlapping ranges discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 3, Priewasser teaches the projection embedded in the base material layer (Fig. 6, 0017).
Regarding claim 4, Priewasser teaches the protective film attached to the wafer in a vacuum chamber (0043), thus under reduced pressure.
Please note, claim 4 includes product by process language with regards to the recitation of “adhered to the adhesive layer under reduced pressure”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 7, Priewasser does not disclose the base layer having a thickens of 5 to 50 µm.
Takahashi discloses the base film having a thickness of about 10 to 300 µm (0019).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the base film of Priewasser to have a thickness of 10 to 300 µm, as taught by Takahashi, as this base film thickness achieves the film having an oxygen permeability of 100 cc/m2 1 day atm or less (0019).
Regarding claims 8 and 9, Priewasser and Goto do not teach a surface treatment layer provided on the surface between the cushion layer and adhesive layer.
Takahashi teaches the base layer can be subjected to conventional physical or chemical treatments such as corona discharge on the side surface with the adhesive layer (0019).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the cushion layer surface to include a surface treatment layer as taught by Takahashi, as this is known surface treatment method (0019).
As Priewasser in view of Goto teach the cushion layer comprising acrylic material as noted above (Goto 0026 and 0030), and Takahashi teaches the same surface layer treatment (corona discharge) a value of (Rb-Ra) of 30 to 100 mass% and a storage modulus E’a of the cushion layer at 180oC being lower than a storage modulus E’b of the surface treatment layer at 180oC would be expected for the prior art product.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Response to Arguments
Applicant’s arguments that Priewasser in view of Takahashi fail to teach or suggest claim 1 as amended and new claims 7-9 have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of the new combination of prior art.
Applicant’s arguments that there is no motivation to combine Takahashi with Priewasser have been fully considered but they are not persuasive.
Takahashi expressly teaches that the base film has an oxygen permeability of 100 cc/m2/day/atm or less (0019). It is clear from the disclosure of Takahashi that by using a base film of this oxygen permeability has improved storage stability as used in the invention of Takahashi, thus motivating the combination.
Correspondence
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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