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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 in the reply filed on 04/06/2026 is acknowledged.
Claims 5 and 6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/06/2026.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 11/09/2023 and 11/05/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Priewasser (US 2018/0247870), 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 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.
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, 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 a 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).
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.
Contact Information
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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