DETAILED ACTION
Applicant’s amendment submitted on June 11, 2026 (“amendment”) in response to the Office action (OA) mailed on March 11, 2026 (“previous OA”) have been fully considered.
Support for the amendment to claim 1 can be found in the paragraph 0017 of the specification.
In view of the amendment, the objection to claims as set forth in the previous OA is withdrawn.
In view of the amendment to the specification, the rejection of claim 2 under 35 USC 112(b) as set forth in the previous OA is withdrawn.
The amendment to the specification submitted on June 11, 2026 is acknowledged. The amendment finds support in the original claim 2.
In view of the amendment, the rejection of claims 1-7 and 9-13 under 35 USC 102/103 over Kawamoto et al. (WO 2020162331 A1; US 20220119685 A1) as set forth in the previous OA is modified.
Claim Rejections - 35 USC § 102/103
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, and a difference between the 5% weight loss temperature of the thermal decomposition layer after UV irradiation and the 5% weight loss temperature of the photothermal conversion layer after UV irradiation is from 10°C to 300°C.” 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).
Response to Arguments
Applicant's arguments submitted in the amendment have been fully considered but they are not persuasive.
With respect to the rejection of the claims under 35 USC 102/103 over Kawamoto et al. (WO 2020162331 A1; US 20220119685 A1), applicant argues that Kawamoto does not teach a 5% weight loss temperature after UV irradiation of each layer. Page 7 of the amendment.
The examiner respectfully submits that applicant’s argument is not found persuasive. Because, applicant has not provided any factual evidence to support the aforementioned argument. See MPEP 2112(V).
Applicant argues that in contrast to Kawamoto, the claimed invention having the claimed 5% weight loss temperature after UV irradiation and difference, the PSA sheet exhibits reduced residue on the support after its peeling from the support via irradiation with laser light. This effect achieved by the claimed invention is not disclosed by Kawamoto. Page 7 of the amendment.
The examiner respectfully disagrees, because as set forth in the current and in the previous OA, Kawamoto inherently discloses the aforementioned claimed 5% weight loss temperature after UV irradiation and difference. As such, applicant’s argument is not found persuasive.
The examiner respectfully submits that applicant may want to consider distinguishing the claimed invention from Kawamoto by incorporating specific composition of e.g. photothermal conversion layer and thermal decomposition layer. However, such amendment will require further search and consideration.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 August 11, 2026
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