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 . 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.
Response to Amendment
The Amendment filed 06/22/2026 has been entered. Claims 1, 3-16 remain pending and rejected in the application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (U.S PG Pub 20130089967A1) and Murakami (U.S Patent 4248750).
Regarding claims 1, Yasuda, drawn to the art of a temporary adhesive composition (Abstract) for use in the manufacture of thin wafers [0034], discloses an adhesive that has a component (A) which cures through a hydrosilylation reaction [0029]. Yasuda discloses the temporary adhesive being an adhesive for peelably ([0123-0124] & [0112-0113]) bonding between a support substrate and a circuit forming surface of a wafer for processing the back surface of the wafer [0109-0111]. Yasuda discloses as well the component (A) containing a polysiloxane (A1) wherein the polysiloxane includes an organopolysiloxane (a1) and an organopolysiloxane (a2) [0050 & 0075 & 0084], wherein both organopolysiloxanes have structures as claimed in instant claim 2 (see Synthesis Examples 2-2 and 3-2, as well as [0074-0076] for (a2) and [0050-0055] for (a1)). Further, Yasuda has disclosed a platinum group metal-based catalyst as part of the composition [0029 & 0075 & 0084-0085].
Yasuda has not explicitly disclosed a component (B) wherein the component B is a polyether-modified siloxane, however, this limitation is known from Murakami, as explained below.
Murakami, drawn also to the art of peelable films (Abstract), which can be used with glass (Column 1, lines 5-17 – Yasuda has also disclosed that the support substrate can be glass, see [0117] of Yasuda), discloses the temporary adhesive composition (Column 1, lines 45-56), containing a component (A) as is disclosed by Yasuda above (see Column 2, lines 28-45 & lines 48-50), and further a polyether-modified siloxane (Column 2, lines 40-42 & Column 4, lines 32-44 & Columns 4-5, lines 63-67 & 1-57 (depicting structures)). Murakami discloses that the addition of such a polyether modified siloxane reduces production of static during coating or after curing and provides an antistatic character whereby a uniform coat can be produced (Column 3, lines 30-38).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Yasuda, with the adhesive comprising a polyether-modified siloxane, as disclosed by Murakami, to arrive at the instant invention, in order to obtain an adhesive that has an antistatic character and where production of static during coating or after coating is reduced.
Regarding claims 3-4, Murakami has disclosed the polyether-modified siloxane having a structure as in B-1 (see Column 5, lines 6-33), wherein R is a polyoxyethylene or polyoxypropylene group (see Column 4, lines 32-43).
Regarding claim 5, Yasuda discloses the processing to be back-surface (i.e. non-circuit forming surface) polishing (i.e. grinding) of the wafer [0111].
Regarding claim 6, Yasuda discloses a first body (support substrate), a second body (wafer) and an adhesive layer in between formed of the adhesive of instant claim 1 [0110]. It is noted that the support substrate and wafer can be interchangeably interpreted as the first and second body, since the method of Yasuda is joining a support substrate and wafer with an adhesive layer and no other intervening layers in between or above.
Regarding claim 7, Yasuda has disclosed applying the adhesive onto a first body to form a coating film (Yasuda discloses the adhesive being applied to one or both of a support substrate and wafer – ‘at least one of the circuit forming surface and support substrate’) [0110], and performing a heating in a bonding state [0119] in which both the first and second body are in contact with the coating film (i.e. adhesive layer) [0118] so as to form a laminate with the first and second body bonded by the adhesive layer [0115-0119].
Regarding claims 8-9, as is noted already in the rejection of instant claim 6, the first and second body can be interchangeably interpreted as the support substrate or wafer, because the adhesive is applied to at least one of the circuit forming face of the wafer or the support substrate, and it will always be the case, regardless of the support substrate or wafer being interpreted as the first or second body, that the circuit forming surface will be facing a support substrate to bond the support substrate and wafer, such that a non-circuit forming (back surface) of the wafer is left open for processing (see [0115-0119]; [0110-0111]; [0121]).
Regarding claims 10-11 (nearly identical limitations with different dependencies), Yasuda discloses the steps of bonding the first and second body with the adhesive layer as claimed (see claim 7 rejection above as the language is identical for the bonding steps), and then discloses a step of delaminating i.e. peeling off the support substrate and wafer [0123-0125], after a processing step of grinding/polishing [0121] the back surface of the wafer (see generally [0110-0114]; [0115-0126]).
Regarding claims 12-15 (exact same limitations with the first body and second body being interchangeably a wafer and support substrate), as is noted above in the rejections of instant claims 6 and 8-9, either the support substrate or the wafer can be interchangeably interpreted as the first or second body, because it does not change the fact that the process applies an adhesive layer to a circuit forming surface of the wafer and then bonding the circuit forming surface of the wafer to a support substrate, wherein the back surface of the wafer is left open for processing. Interpreting the first body as a wafer or the second body as a substrate and vice-versa, does not change this process or the end result in any way, because the end result is always a circuit forming surface of the wafer being bonded to the support substrate by the adhesive layer.
Regarding claim 16, Yasuda has disclosed processing to be grinding i.e. polishing of the back surface of the wafer [0121 & 0111].
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues that Yasuda and Murakami as combined do not make the instant invention obvious because Murakami is drawn to a peelable film that peels of an adhesive whereas Yasuda is drawn to a temporary film that peels of a substrate.
The examiner disagrees. While it may be true that in Murakami the function of the peelable film is different than the peelable film in Yasuda, in that the peelable film of Murakami is used to enclose or protect a base film with an adhesive film on it, and then the peelable film is peeled off once the base film and adhesive are to be used, this essentially functions the same as the process in Yasuda but with different terminologies. In Yasuda, a wafer and support are peelably bonded by a peelable film and wherein the peelable film is then removed to separate the wafer and support, while in Yasuda this is not the case. However, if another base film or substrate were to be used as a support or backing with the peelable film in Murakami, then the invention of Murakami and Yasuda would essentially be the same. Further, Murakami discloses a peelable film that has advantages an ordinarily skilled artisan would find obvious to avail of regardless of the exact process operation involving the peelable film. The peelable film of Murakami has a composition that is essentially the same as that instantly claimed and as disclosed in Yasuda, with the exception of component (B) when compared to Yasuda. However, Yasuda is being modified by Murakami solely to include component (B), as disclosed by Murakami, and for which Murakami discloses advantages such as, reducing production of static during coating or after curing and provides an antistatic character whereby a uniform coat can be produced (Column 3, lines 30-38 of Murakami), which would make it obvious to an ordinarily skilled artisan to modify the teaching of Yasuda, specifically the composition of the peelable film, to include component (B), in order to avail of the above advantages, regardless of the specific intended use of the composition. Finally, it is also noted that the instant claim 1 is drawn to an adhesive i.e. a product, and the intended use of a product does not patentably distinguish from the prior art. Thus, while Murakami may use the peelable film differently in its specific process, it does not take away from the specific advantages of the peelable film that are present because of the presence of component (B), and an ordinarily skilled artisan would find it obvious to avail of those advantages and modify the adhesive of Yasuda with component (B).
In response to applicant's argument that Yasuda and Murakami disclose different functions for the peelable film, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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