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 .
Response to Amendment
Applicant filed a response and cancelled claims 1 and 3-6 on 12/12/2025.
Applicant filed a Declaration by Maho Ogasawara on 12/12/2025.
Response to Arguments
The Declaration was fully considered and found persuasive. Applicant’s arguments and Declaration as related to the surface resistivity of the prior art adhesive under humidity were found persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Soejima in view of Shiga and Yang.
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 2, 7, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Soejima (JP2016065209, citation based on machine translation) in view of Shiga (PG-PUB 2016/0056066) and Yang (PG-PUB 2007/0141329).
Regarding claim 2 and 9, Soejima teaches a pressure-sensitive adhesive sheet for processing a semiconductor element (Page 16), comprising:
a base material comprising an antistatic layer (Page 2, 9, and 14; Figure 2a, items 20 and 30); and
a pressure-sensitive adhesive layer (Page 2, Figure 2a, item 10)
wherein the surface resistivity of the antistatic layer (i.e., a surface resistivity of the base material) is 1.0 x 1013Ω / □ or less (Page 9), and
wherein the surface resistivity of the pressure-sensitive adhesive is 1.0 x 1013Ω / □ or less (Page 11),
wherein the base material has an antistatic layer on at least one surface thereof (Page 2, 9, and 14; Figure 2a, items 20 and 30), wherein the antistatic layer contains a quaternary ammonium salt (Page 9).
Soejima does not explicitly teach a surface resistivity of the base material at a time of 92% humidity and surface resistivity of the pressure-sensitive adhesive layer at a time 92% humidity satisfy expression (3) and expression (4), respectively.
In regards to expression (3), Shiga teaches a film for the backside of a semiconductor (Figures 1 and 2a-2d), where the coefficient of moisture of the film is preferably low [0096]. Shiga teaches the coefficient of moisture absorption is preferably 1 % by weight or less, and more preferably 0.8% by weight or less [0096]. Shiga by making the coefficient of moisture absorption 1% by weight or less, the laser marking property can be improved, and generation of voids between the film 2 for the backside
of a semiconductor and the semiconductor element can be suppressed or prevented in a reflow step, for example. Shiga teaches the coefficient of moisture absorption can be adjusted by changing the added amount of the inorganic filler, for example [0096].
Shiga teaches because cutting water is used in the dicing step of the semiconductor water, the film may absorb moisture and water content may exceed the normal value, and it is desirable to avoid such problems [0088].
One of ordinary skill in the art would have understood that for a film for the backside of a semiconductor, such as a film of a dicing tape, it is undesirable to have water absorption, as it effects the quality of the diced wafer as taught by Shiga. One of ordinary skill in the art would have recognized the coefficient of moisture absorption in the film is a result effective variable that can be optimized to improve the stability of the film and wafer, as taught by Shiga. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to optimize the coefficient of moisture absorption of the base material of Soejima to provide a stable film suitable for use and processing, such as water cutting, and in doing so, would have arrived at a film with limited water absorption and change to surface resistivity under humidity and, therefore, a ratio of surface resistivity that satisfy expression (3).
In regards to expression (4), Yang teaches an antistatic pressure sensitive adhesive for use in articles such as liquid crystal displays, computer screens, and televisions [0154]. Yang teaches controlling the static charge in electronics is a known problem in the industry and have been managed through different techniques [0003]-[0007]. Yang teaches any surface that generates electrostatic charge and needs effective antistatic properties at a variety of temperatures and humidity ranges will benefit from a suitable antistatic pressure sensitive adhesive [0154].
Yang teaches water absorption into the pressure sensitive adhesive causes
bubbling in the adhesive, yellowing and aging of the adhesive and haze [0150]. Yang teaches organic salts are compatible with a variety of polymers and many of the salts are also hydrophobic (immiscible in water), and so their antistatic performance is relatively independent of atmospheric humidity levels and durable even under exposure to aqueous environments [0019]. Yang teaches generally, in an antistatic pressure adhesive the surface resistivity at low humidity (23% humidity at 23°C) is within two times of the surface resistivity at high humidity (50% humidity at 20°C) [0150].
Both Soejima and Yang are drawn to the same field of anti-static pressure sensitive adhesive for electronic applications. One of ordinary skill in the art would have recognized the water absorption in pressure sensitive adhesive is a result effective variable that influences the appearance and integrity of the adhesive in an electronic article, as taught by Yang. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to optimize the water absorption of the pressure sensitive adhesive of Yang and, therefore, the ratio of the surface resistivity of the pressure-sensitive adhesive layer at a time 92% humidity and normal conditions, to provide a pressure sensitive adhesive that is stable in a variety of environments, as taught by Yang and desired by Soejima. In doing so, one of ordinary skill in the art would have arrived at a pressure sensitive adhesive with limited water absorption and, therefore, minimal change to the surface resistivity under humid conditions, thereby providing a surface resistivity ratio satisfying expression (4).
Regarding claim 7, Soejima in view of Shiga and Yang teaches the pressure-sensitive adhesive sheet as applied to claim 2, wherein the pressure-sensitive adhesive layer contains an ionic liquid (Soejima, page 4-5).
Regarding claim 8, Soejima in view of Shiga and Yang teaches the pressure-sensitive adhesive sheet as applied to claim 7, wherein a content of the ionic liquid in a composition for forming the pressure-sensitive adhesive is from 0.01 wt% to 10 wt% (Soejima, Page 4-5).
Given that the prior art teaches a range overlapping with the claimed range, the claimed range is obvious (MPEP 2144.05).
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Soejima (JP2016065209, citation based on machine translation) in view of Shiga (PG-PUB 2016/0056066) and Yang (PG-PUB 2007/0141329), as applied to claim 9, in further view of Murata (JP2019059541A, citation based on machine translation).
Regarding claim 10, Soejima in view of Shiga and Yang teaches the pressure-sensitive adhesive sheet as applied to claim 9.
Soejima in view of Shiga and Yang does not teach the base material has a content of the quaternary ammonium salt in a composition for forming the antistatic layer is from 0.1 wt% to 50 wt%.
Murata teaches an antistatic cover tape material for a carrier tape comprising antistatic agent in the form of a quaternary ammonium salt polymer (Page 3). Murata teaches the content of the quaternary ammonium salt polymer in the total content of the antistatic coating composition is 3 wt% or more and 30 wt% or less (Page 3-4). Murata teaches if the amount of the quaternary ammonium salt is less than the range, the antistatic effect is difficult to be developed and the frictional force tends to be high, while if the amount of the quaternary ammonium salt is more than the claimed range, the viability of the coating on the substrate layer is affected (Page 4).
Both Soejima and Murata teaches an antistatic layer using quaternary ammonium salts. Soejima is silent to the particular concentration of the quaternary ammonium salt used in the composition, prompting one to look elsewhere in the art. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the antistatic layer of Soejima with the known suitable quaternary ammonium salt composition as taught by Murata, to yield the predictable result of providing a suitable concentration of antistatic agent in the antistatic layer for optimal antistatic effect and viability of the layer.
Alternatively, one of ordinary skill in the art would have recognized the concentration of quaternary ammonium salt in an antistatic layer is a result effective variable that influences the antistatic effect of a tape and the coverage of the coating, as taught by Murata. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to optimize the quaternary ammonium salt concentration of Soejima for reasons provided by Murata and, in doing so, arrive at a concentration between 0.1 wt% to 50 wt%.
Conclusion
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/HANA C PAGE/ Examiner, Art Unit 1745