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 1-4 and 13, in the reply filed on 04/10/2026 is acknowledged.
Claims 5-9 and 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 04/10/2026.
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (US 2017/0145267 A1).
Regarding Claims 1-3 and 13, Liu discloses a removable adhesive composition (para 0001) (i.e. composition for temporary fixing) comprising styrene block copolymer (para 0009) (i.e. claimed hydrocarbon thermoplastic resin, according to the present specification, para 0023), monomers or oligomers such as epoxy-functional (meth)acrylate or methacrylated epoxy (paras 0034-0035) (i.e. claimed thermosetting resin, according to the present specification, para 0018), and UV absorber such as hydroxybenzophenones or hydroxyphenyl triazines (para 0052) (i.e. claimed ultraviolet absorber, according to the present specification, paras 0015-0016). The adhesive may be used in semiconductors (para 0075).
While Liu discloses that the film may be used in semiconductors, there is no explicit disclosure that the film is used for fixing a semiconductor member and a support member as claimed. However, Applicants 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.
It is the examiner’s 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 Liu disclose a film as presently claimed, it is clear that the film would be capable of performing the intended use, i.e. for fixing a semiconductor member and a support member, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding Claim 4, Liu discloses all the limitations of the present invention according to Claim 1 above. Although there is no disclosure in Liu of transmittance at a wavelength between 308 nm and 355 nm (UV wavelengths) as presently claimed, given that Liu disclose a film as presently claimed including UV absorbers as presently claimed, it is clear that the film of Liu would inherently possess transmittance at a wavelength between 308 nm and 355 nm as presently claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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