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 1-13 and Species I (claim 5) in the reply filed on January 22, 2026 is acknowledged.
Claims 8 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 22, 2026.
Claim Objections
Claims 1-3, 11, and 12 are objected to because of the following informalities:
As to claim 1, at lines 6-7, replace the recitation “the photothermal conversion layer after UV irradiation” with “the photothermal conversion layer after the UV irradiation” in order to make it clear that the photothermal conversion layer was irradiated under the same UV radiation as the thermal decomposition layer.
As to claims 2, 3, 11, and 12, insert “the” before “UV irradiation”.
Appropriate correction is required.
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.
Claim 2 is 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 2 is indefinite in view of the disclosure in the specification as to how 5% weight loss temperature of the photothermal conversion layer was measured. Claim 2 recites 5% weight loss temperature range of from 300°C to 600°C. This temperature range encompasses temperature that is slightly above 500°C to 600°C. However, the specification discloses 5% weight loss temperature measurement over 20°C to 500°C (page 54 of the specification). Therefore, it is unclear what is meant by 5% weight loss temperature between temperature range of slightly above 500°C to 600°C, because the specification only discloses 5% weight loss temperature over a range of 20°C to 500°C. Specifically, the specification, on page 54 discloses the following:
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Based on the above, the specification discloses that 5% weight loss temperature was measured over a range of 20°C to 500°C (see “The weight loss of the evaluation sample was measured while its temperature was increased again from 20°C to 500°C at the above-mentioned rate of temperature increase.”). However, the scope of claim 2 encompasses temperature range of slightly above 500°C to 600°C. Therefore, it is unclear what is meant by 5% weight loss temperature between a temperature slightly above 500°C to 600°C.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-7 and 9-13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kawamoto et al. (WO 2020162331 A1; US 20220119685 A1 is relied upon as English equivalent document in the rejection).
As to claim 1 recitation “5% weight loss temperature” after UV radiation, the examiner submits that paragraph 0023 of US Patent Application Publication No. 20240376351 A1 (“published application”) explains the meaning of the aforementioned recitation.
Further, as to claim 1, Kawamoto discloses a pressure sensitive adhesive (PSA) sheet for temporarily fixing an electronic part (0168-0169). The PSA sheet of Kawamoto comprises a substrate layer 10 (photothermal conversion layer) and PSA layers 21 (thermal decomposition layer) and 22 applied on each side of the substrate layer (Figure 3, Figure 4, 0031). Further, as shown in Figures 3 and 4, the PSA layer 21 (thermal decomposition layer) of Kawamoto is directly arranged on the substrate layer 10 (photothermal conversion layer).
Further, as to claim 1 limitation of photothermal conversion layer, Kawamoto does not explicitly mention a photothermal conversion layer. However, Kawamoto and applicant disclose identical material for a photothermal conversion layer. Specifically, Kawamoto and applicant disclose resin films such a polyimide based resin, polyether ether ketone based resin, an acrylic resin, and polyethylene naphthalene based resin as a photothermal conversion layer (0155 of Kawamoto, and claim 5 and 0042 of the published application). According, it is clear that Kawamoto’s substrate layer is a photothermal conversion layer.
Further, as to claim 1 limitation of thermal decomposition layer, Kawamoto does not explicitly mention a thermal decomposition layer. However, Kawamoto and applicant disclose identical material for a thermal decomposition layer. Specifically, Kawamoto and applicant disclose an active energy ray curable PSA as a thermal decomposition layer (see 0103 and 0124-0125 of Kawamoto, and claim 10 of present application). Kawamoto further discloses reduction in adhesive strength due to heating/curing treatment of the PSA (0010, 0011, 0014, and 0103). According, it is clear that PSA layer of Kawamoto (e.g. PSA layer 21) is a thermal decomposition layer.
As to claim 1, Kawamoto teaches claimed invention except for the property “wherein a 5% weight loss temperature of the thermal decomposition layer after UV irradiation is lower than a 5% weight loss temperature of the photothermal conversion layer after UV radiation.”. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Kawamoto as set forth previously discloses identical photothermal conversion layer and thermal decomposition layer as claimed. Accordingly, absent any factual evidence on the record, it is reasonable to presume that Kawamoto inherently possesses the claimed property. Alternatively, the claimed property would obviously be present, once the PSA sheet of Kawamoto is provided.
As to claims 2-4, 6-7, 9, 11, and 12, Kawamoto teaches claimed invention except for the properties recited in the claims. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Kawamoto as set forth previously discloses identical photothermal conversion layer and thermal decomposition layer as claimed. Accordingly, absent any factual evidence on the record, it is reasonable to presume that Kawamoto inherently possesses the properties recited in claims 2-4, 6-7, 9, 11, and 12. Alternatively, the claimed properties would obviously be present, once the PSA sheet of Kawamoto is provided.
As to claim 5, Kawamoto discloses that the substrate layer is a polyimide resin film (0155).
As to claim 10, Kawamoto discloses that the PSA layer is an active energy ray curable PSA (0103 and 0124-0125).
As to claim 13,Kawamoto discloses a PSA layer 22 (further PSA layer), a substrate layer 10 (photothermal conversion layer), and a PSA layer 21 (thermal decomposition layer) laminated in this order (Figure 3, Figure 4, 0031).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ueno et al. (US 20250354034 A1) discloses an adhesive sheet for provisional fixation of electronic component and Ueno et al. (US 20260008939 A1) discloses an adhesive sheet for provisional fixation of electronic component.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 March 4, 2026