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
This office action is in response to the amendment and remarks filed October 27, 2025 wherein claim 1 was amended, claims 2-3 canceled and new claims 8-11 added. Claims 1 and 4-11 are pending and considered below.
In view of the new limitations recited in independent claim 1, the previous Section 102 rejection of claims 1-3 and 5 and the Section 103 rejections of claims 4 and 6-7 are withdrawn. Claim 1 now recites a structural unit combination further limited by content ranges not previously claimed, such limitations not taught or suggested by the previously applied art.
Please see the new Section 112 and 103 rejections below necessitated by the amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 4-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "the total mass" and "the monomers" at line 6. There is insufficient antecedent basis for these limitations in the claim.
Claims 4-11 are rejected in view of their dependency from claim 1.
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 1, 4-5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over the teachings of Saiki et al., WO 2015016053A (hereafter Saiki), discussed with reference to the attached machine translation of the description thereof.
Regarding claim 1, it is noted that the preamble recitation of "for a dicing protective layer" is a statement of future use that does not further limit composition claim 1. On the merits, Saiki teaches a composite sheet for forming a protective film that can form a protective film on the back surface of a workpiece, such as a semiconductor wafer or a semiconductor chip, thereby improving the manufacturing efficiency of the semiconductor chip, the protective film formed by hardening the film-forming film (para [0001]). The protective film of Saiki is a protective layer formed from a composition (see para [0089]) that is applied to the workpiece, followed by a step of dicing (para [0150]).
A composition of Saiki preferably includes an acrylic polymer (A1), i.e., resin, (paras [0089]-[0100]) that may have a carboxy group-containing monomer (structural unit (a2) (paras [0101]-[0103]) and an organic solvent (paras [0140]-[0141]).
In particular, the acrylic polymer, i.e., polymer (A1) of Saiki includes a structural unit derived from (meth)acrylic acid (unit (a2); para [0103]) that refers back to the unit (x2) that is a component of an adhesive of Saiki described at paras [0049]-[0052] with para [0052] teaching examples of the unit that includes a carboxyl group-containing monomer such as (meth)acrylic acid, maleic acid, fumaric acid and itaconic acid)
and a structural unit derived from a (meth)acrylic acid alkyl ester (unit (a1); Saiki teaching an alkyl(meth)acrylate as a main component at para [0095].
Saiki further teaches a content of the structural unit derived from (meth)acrylic acid (unit (a2)) is preferably 1 to 50% by mass, more preferably 5 to 45% by mass, even more preferably 10 to 40% by mass and still more preferably 20 to 40% by mass relative to all structural units of the acrylic polymer (A1) (para [0107]), each of these ranges overlapping the recited range of "5 to 25% by mass based on the total mass of structural units derived from the monomers constituting the acrylic resin." In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); MPEP 2144.05.
Saiki also teaches a content of the structural unit derived from a (meth)acrylic acid alkyl ester (unit (a1)) is preferably 50% by mass or more, more preferably 50 to 99% by mass, even more preferably 55 to 90% by mass and even more preferably 60 to 80% by mass, based on all structural units of the acrylic polymer (A1) (para [0100]), each of these ranges overlapping the recited range of "40 to 90% by mass based on the total mass of structural units derived from the monomers constituting the acrylic resin." In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); MPEP 2144.05.
Regarding claim 4, Saiki teaches its acrylic polymer (A2) has a weight average molecular weight of preferably 20,000 to 3,000,000 (para [0093]), such range overlapping and thus rendering obvious the recited range of 10,000 to 100,000.
Regarding claim 5, Saiki teaches its solvent may be ethyl acetate (para [0141]), thus teaching the recited aliphatic carboxylic acid ester-based solvent.
Regarding the new claim 8 recitation of "wherein the content of the structural unit derived from (meth)acrylic acid is 8 to 20% by mass based on the total mass of structural units derived from the monomers constituting the acrylic resin," see the rejection of claim 1 above and the Saiki teaching that the structural unit derived from (meth)acrylic acid (unit (a2)) is preferably 1 to 50% by mass and more preferably 5 to 45% by mass relative to all structural units of the acrylic polymer (A1) (para [0107]), such ranges overlapping and thus rendering obvious the recited range.
Regarding the new claim 9 recitation of "wherein the content of the structural unit derived from (meth)acrylic acid is 10 to 15% by mass based on the total mass of structural units derived from the monomers constituting the acrylic resin," see the rejection of claim 1 above and the Saiki teaching that the structural unit derived from (meth)acrylic acid (unit (a2)) is preferably 1 to 50% by mass, more preferably 5 to 45% by mass, even more preferably 10 to 40% by mass relative to all structural units of the acrylic polymer (A1) (para [0107]), such ranges overlapping and thus rendering obvious the recited range.
Regarding the new claim 10 recitation of "wherein the content of the structural unit derived from a (meth)acrylic acid alkyl ester is 50 to 88% by mass based on the total mass of structural units derived from the monomers constituting the acrylic resin," see the rejection of claim 1 above and the Saiki teaching that the content of the alkyl(meth)acrylate main component (structural unit (a1)) is preferably 50% by mass or more, more preferably 50 to 99% by mass, even more preferably 55 to 90% by mass and even more preferably 60 to 80% by mass, based on all structural units of the acrylic polymer (A1) (para [0100]), such ranges overlapping and thus rendering obvious the recited range.
Regarding the new claim 11 recitation of "wherein the content of the structural unit derived from a (meth)acrylic acid alkyl ester is 55 to 85% by mass based on the total mass of structural units derived from the monomers constituting the acrylic resin," see the rejection of claim 1 above and the Saiki teaching the content of the alkyl(meth)acrylate main component (structural unit (a1)) is preferably 50% by mass or more, more preferably 50 to 99% by mass, even more preferably 55 to 90% by mass and even more preferably 60 to 80% by mass, based on all structural units of the acrylic polymer (A1) (para [0100]), such ranges overlapping and thus rendering obvious the recited range.
Allowable Subject Matter
Method claim 6 and claim 7 (in view of its dependency from claim 6), would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 6, a method of Saiki teaches the steps of forming a protective layer on a semiconductor wafer using the composition of Saiki followed by a step of dicing (see paras [0150]-[0158]). However, Saiki does not teach the final step of claim 6 of removing the protective layer from the diced semiconductor wafer by using an aqueous alkali solution. In contrast with the recitation in claim 6, Saiki teaches a process wherein the protective layer is cured to form a protective film that stays with the chip (para [0158]). Although the processes according to Uematsu and Asai described in the previous office action teach the use of an acrylic protective layer that is removed after a step of dicing, the examiner found no teaching or suggestion in Saiki, Uematsu or Asai for combining these references in a manner resulting in the method recited in claim 6. The other art of record does not provide this deficiency.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746