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 § 112
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 13 recites “the hydrocarbon resin is a hydrocarbon resin containing a monomer unit derived from styrene.” Parent claim 1 recites a hydrocarbon resin that is selected from a group consisting of particular polymers, including “a styrene-butadiene-styrene block copolymer, (SBS), a styrene-isoprene-styrene block copolymer (SIS), [etc.]” Dependent claim 13 encompasses any hydrocarbon resin derived from styrene and so is broader in scope than parent claim 1, which only encompasses particular styrene-based polymers.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4-5, and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katagiri et al. (WO 2021/124668) Lee et al. (KR 2019-00596548).
Note: citations refer to the machine translation of WO ‘668 mailed 12/3/2025 and citations refer to the machine translation of KR ‘648 mailed on 7/22/2025.
Regarding claims 1 and 13:
Katagiri discloses an adhesive composition comprising a styrene-based elastomer containing a carboxyl group; a styrene-based elastomer containing no carboxyl group; and an epoxy resin (thermosetting resin), wherein the adhesive prevent peeling or lifting during a temporary fixing operation [abstract; 0001; 0007-0009]. The styrene-based elastomer containing a carboxyl group comprises styrene-butadiene block copolymers, styrene-ethylene propylene block copolymers, styrene-butadiene-styrene block copolymers, styrene-isoprene-styrene block copolymers, styrene-ethylene-butylene-styrene block copolymers, and styrene-ethylene-propylene-styrene block copolymers modified with unsaturated carboxylic acids [0015]. The carboxy-free styrene-based elastomer comprises the unmodified versions of these polymers [0017]. The adhesive further comprises carbon black [0040]. The thickness of the adhesive layer is 10-50 µm [0041].
Katagiri is silent with regard to the content of the carbon black.
Amounts within the claimed range were known to have utility in the art. Lee discloses an adhesive film for use in bonding semiconductor chips that comprises a thermoplastic resin, a multifunctional epoxy resin, a thermosetting epoxy resin, and a filler [0001; 0005-0006]. The filler comprises carbon black [0048]. The amount of filler is 5-50 parts by weight based on the total weight of the composition to provide desirable mechanical properties, particularly strength and hardness [0049]. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of carbon black, including over amounts falling within the presently claimed range, to provide the mechanical properties taught by Lee.
While there is no disclosure that Katagiri’s adhesive film is “for temporary fixing used for temporarily fixing a semiconductor member and a support member,” the recitation of this feature in the claims is merely an intended use. Applicant's attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
The examiner takes the position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure is capable of performing the intended use. Given that Katagiri in view of Lee discloses a film as presently claimed, it is clear this film would be capable of performing the presently claimed intended use as required in the above cited portion of the MPEP.
Regarding claim 2:
Katagiri in view of Lee discloses a resin composition comprising the same resins and carbon black as presently claimed, including using amounts of carbon black within the claimed range. The examiner submits those prior art films that otherwise have the same components as claimed would have the same properties as claimed.
Regarding claim 4:
Katagiri discloses the adhesive layer in contact with various substrates [0042; 0048-0058].
Regarding claim 5:
Katagiri is silent with regard to an additional (first) curable resin film.
Such constructions were known in the art to have utility. For example, Lee teaches a structure of substrate layer/adhesive layer/adhesive layer/substrate layer [0071]. One of ordinary skill in the art such a construction could be used to adhere two substrates together.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use two layers of the Katagiri’s curable adhesive in conjunction with two substrates to adhere the two substrates together, and thereby arrive at the claimed laminated body.
Regarding claim 11:
Although Katagiri and Lee are silent with regard to the volume percentage of the carbon black, the combination of references, particularly Lee’s disclosure, suggests amounts of carbon black that overlap with the presently claimed mass amounts. The examiner submits those mass amounts falling within the claimed mass amount range would intrinsically result in volume percentages within the claimed range because the material and mass amount would otherwise the same as presently claimed.
Regarding claim 12:
Katagiri does not require an additional layer.
Allowable Subject Matter
Claims 6-7 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.
The following is a statement of reasons for the indication of allowable subject matter:
Katagiri (WO 2021/124668) discloses an adhesive layer as described above. While the reference discloses a support member and the adhesive layer, the reference is silent with regard to a first curable resin layer and a second curable resin layer positioned in the laminated body as presently claimed.
Lee (KR 2019-00596548) discloses an adhesive film for use in bonding semiconductor chips that comprises a thermoplastic resin, a multifunctional epoxy resin, a thermosetting epoxy resin, and a filler [0001; 0005-0006]. The thermoplastic resin comprises acrylate copolymer [0021-0023]. Therefore, the reference does not disclose a hydrocarbon resin as presently claimed. Additionally, while Lee teaches a structure of substrate layer/adhesive layer/adhesive layer/substrate layer [0071], wherein one adhesive layer can be considered a first curable resin layer, the reference is silent with regard to a second curable resin layer positioned in the laminated body as presently claimed. Additionally, the substrate layer/adhesive layer/adhesive layer/substrate layer suggested by Lee, wherein one adhesive layer corresponds to the present first curable resin film, such an adhesive would not necessarily meet the claimed transmittance requirement, particularly in view of the use of carbon black in the adhesive layer.
Oyama (JP 2021-111645) discloses a temporary fixing film for use with semiconductor components and a support [abstract; 0001; 0007; 0009]. The film comprises a resin layer 34 and a light absorbing layer 32 [0029]. The light absorbing layer 32 comprises a curable resin component, which includes those resins disclosed as being useful for the resin layer, and conductive particles that absorb light, including carbon powder [0034-0035]. The curable resin component comprises a hydrocarbon thermoplastic resin and a thermosetting resin [0010; 0042-0050]. Oyama teaches the amount of carbon powder is broadly 10-90% by mass of the composition, including amounts of 50% by mass or less [0036]. Oyama teaches a thickness of the light absorption layer “may be 1 to 5000 nm (0.001 to 5 μm) or 50 to 3000 nm (0.05 to 3 μm) from the viewpoint of easy peelability” [0040]. Therefore, Oyama teaches away from the present requirement that the film for temporary fixing is 8 µm or more.
Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
Applicant’s amendment to claim 1 to require the film for temporary fixing is “8 µm or more” overcomes previous rejections based on Oyama. As discussed above, the reference teaches a range of 0.001-5 µm and so teaches away from the claimed values which are at least 60% larger (8/5=1.6) than Oyama’s largest preferred thickness. Applicant’s additional arguments are therefore moot.
Applicant argues Lee’s thermoplastic polymer does not comprise a hydrocarbon resin as amended (p10). The examiner agrees the reference is silent with regard to a hydrocarbon resin selected from the group newly added to claim 1. Therefore, the previous rejections based on Lee are withdrawn. The examiner notes, however, that claims remain rejected over Katagiri in view of Lee as set forth above. while Lee does not disclose all the features of the present claimed invention, it is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely useful amounts of carbon black, and in combination with the primary reference, discloses the presently claimed invention.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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