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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1, 5, 6, and 14-22, drawn to a release film.
Group II, claims 2 and 4, drawn to a release film.
Group III, claims 3 and 7-13, drawn to a release film.
Group IV, claim 23, drawn to a method of producing a semiconductor package.
The inventions listed as Groups I, II, III, and IV do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common feature --a release film comprising a release layer and a substrate layer, wherein: the release layer comprises two or more polymers-- cannot qualify as a special technical feature as it does not provide a contribution over the prior art because it is disclosed by Sasaki et al. (US 2020/0282605 A1) (see the international search report).
In particular, Sasaki teaches a mold release film comprising a concave-convex layer having a concave-convex structure on a surface of at least one surface of a substrate, the concave-convex layer preferably contains two or more kinds of polymers, oligomers, or monomers, such as a Component A and a Component B, which are different, wherein Component A can be a polyacrylonitrile, wherein Component A has a solubility parameter (SPA) of 8 to 21 (e.g., 12.6) and a mass average molecular weight of 300 to 300,000, wherein Component B has a solubility parameter (SPB) of 7 to 20 (e.g., 9.9) and a mass average molecular weight of 500 to 400,000, and wherein SPB is lower or higher than SPA in a range of 0.01 to 10 ([0034], [0076], [0114], [0115]-[0121], [0124]-[0126], [0128], [0374], [0375], [0383], and [0384] of Sasaki).
Therefore, the reference(s) specifically suggest(s) using the common elements as claimed.
During a telephone conversation with Amy Schmid on 8 July 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1, 5, 6, and 14-22. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2-4 and 7-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected inventions.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claims 16 and 17 are 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.
With Regards to Claim 16: Claim 16 recites the limitation that --at least one of the polymers is a polymer containing a structural unit derived from a (meth)acrylonitrile monomer-- in lines 2 to 3. As written, a person having ordinary skill in the art would not be adequately apprised as to the intended scope of the claimed invention (i.e., it is unclear as to how much of the original chemical structure of the (meth)acrylonitrile monomer remains when it is changed into the structural unit); and the instant specification is silent with regards to the derived chemical structural unit. Therefore, for the purposes of examination, it is the decision of the examiner that so long as the polymer contains a structural unit of at least "acrylonitrile" the limitation is considered taught.
With Regards to Claim 17: Claim 17 recites the limitation --the two or more polymers are (meth)acrylic polymers having a structural unit derived from a (meth)acryloyl monomer-- in lines 2 to 3. As written, a person having ordinary skill in the art would not be adequately apprised as to the intended scope of the claimed invention (i.e., it is unclear as to how much of the original chemical structure of the (meth)acryloyl monomer remains when it is changed into the structural unit of the (meth)acrylic polymer); and the instant specification is silent with regards to the derived chemical structural unit. Therefore, for the purposes of examination, it is the decision of the examiner that so long as the two polymer are (meth)acrylic polymers, the limitation is considered taught.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 6, and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasaki et al. (US 2020/0282605 A1).
Regarding Claims 1 and 5: Sasaki teaches a mold release film comprising a concave-convex layer having a concave-convex structure on a surface of at least one surface of a substrate, the concave-convex layer preferably contains two or more kinds of polymers, oligomers, or monomers, such as a Component A and a Component B, which are different, wherein Component A can be a polyacrylonitrile, wherein Component A has a solubility parameter (SPA) of 8 to 21 (e.g., 12.6) and a mass average molecular weight of 300 to 300,000, wherein Component B has a solubility parameter (SPB) of 7 to 20 (e.g., 9.9) and a mass average molecular weight of 500 to 400,000, and wherein SPB is lower or higher than SPA in a range of 0.01 to 10 ([0034], [0076], [0114], [0115]-[0121], [0124]-[0126], [0128], [0374], [0375], [0383], and [0384] of Sasaki); which anticipates the claimed range of --a difference in SP value between at least two of the polymers is 0.3 or more--. See MPEP §2131.03(I).
Regarding Claim 6: Sasaki also teaches that Component B occupies the largest part of the components forming the convex portions ([0124] and [0130] of Sasaki), but does not explicitly recite --at least one of the following (1) or (2) is satisfied: (1) the release layer has a plurality of different regions with different component ratios, and in a case in which Raman spectroscopy is performed on the different regions, at least a part of the different regions exhibits different peak intensities, or (2) a surface of the release layer has a convex portion and a concave portion, and in a case in which Raman spectroscopy is performed on the convex portion and the concave portion, at least a part of the convex portion and at least a part of the concave portion exhibits different peak intensities-- {instant claims 6}. However, in that Component A and Component B are different, and each phase separate to form the concave portions and convex portions, respectively, a person having ordinary skill in the art would have recognized the upon measurement with Raman spectroscopy of the convex portion and the concave portions, said convex portions and said concave portions would exhibit different peak intensities due to their different components. Therefore, it is the decision of the examiner that the limitation is considered taught by Sasaki.
Regarding Claim 15: Sasaki teaches that a weight (mass) average molecular weight (Mw) of the polymers is 300 to 300,000 and 500 to 400,000 ([0120] and [0128] of Sasaki); which is sufficiently specific to anticipate the claimed range of --1.0x105 or more--. See MPEP §2131.03(II).
Regarding Claim 16: Sasaki teaches that at least one of the polymers is a polymer containing a structural unit derived from a (meth)acrylonitrile monomer, and a different in proportion of structural units derived from a (meth)acrylonitrile monomer between at least two of the polymers is 1% by mass or more ([0121] and [0131] of Sasaki). (In the instant case, where only one of Component A or Component B includes a polyacrylonitrile, then the limitation is considered taught, as it would have more than 1% by mass acrylonitrile.)
Regarding Claim 17: Sasaki teaches that the two or more polymers are (meth)acrylic polymers having a structural unit derived from a (meth)acryloyl monomer ([0121] and [0131] of Sasaki). (In the instant case, since both Component A and Component B can be a poly(meth)acrylate, the limitation is considered taught.)
Regarding Claim 18: Sasaki teaches at least a portion of the polymer is crosslinked ([0135] of Sasaki).
Regarding Claim 19: Sasaki teaches a content of the polymer with the highest content in the release layer can be about 42 % [=(45/(45+27.5+27.5+5))*100] by mass with respect to a total content of the polymers ([0208] and [0384] of Sasaki); which anticipates the claimed range of --95 % or less--. See MPEP §2131.03(I).
Regarding Claim 20: Sasaki teaches that the substrate is a polyester film ([0045] of Sasaki).
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.
Claims 14, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (US 2020/0282605 A1) as applied to claim 1 above, and further in view of Suzuki (WO 2021/079746 A1).
Sasaki is relied upon as stated above.
Regarding Claims 14, 21, and 22: Sasaki fails to disclose --an arithmetic mean roughness (Ra) of an outer surface of the release layer be 1.5 µm or less-- {instant claim 14}, --a thickness of the release layer be from 1 µm to 50 µm-- {instant claim 21}, and --the release film being a release film for compression molding-- {instant claim 22}.
Suzuki discloses a release film comprising a base layer and a release layer, the release layer comprising resin particles in a binder resin, wherein the release film is suitable for compression molding ([0014], [0020], and [0037] of Suzuki). Suzuki also discloses that the average thickness of the release layer is from 1 µm to 50 µm ([0053] of Suzuki). It is also disclosed by Suzuki that the arithmetic mean roughness (Ra) of the outer surface of the release layer is 0.5 µm to 5 µm ([0054] of Suzuki); which overlaps the presently claimed range of --1.5 µm or less--. Suzuki differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Suzuki, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the release film of Suzuki with the release film disclosed by Sasaki in order to have --an arithmetic mean roughness (Ra) of an outer surface of the release layer be 1.5 µm or less-- {instant claim 14}, --a thickness of the release layer be from 1 µm to 50 µm-- {instant claim 21}, and --the release film being a release film for compression molding-- {instant claim 22}. One of ordinary skill in the art would have been motivated to have combined the release film of Suzuki with the release film disclosed by Sasaki, from the stand-point of having irregularities that enhance the slipperiness of the outer surface of the release layer ([0020] of Suzuki).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
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