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 .
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 .
Status of the Claims
Claims 1-20 are pending and the subject of this NON-FINAL Office Action.
Election/Restrictions
Applicant’s election with traverse of urethane-polyester release film the reply filed on 09/02/2026 is acknowledged. Applicants argue that all of the compositions of Examples 1-16 have a common urethane release layer feature. However, this is not novel, much less inventive as is shown below. Moreover, the claims encompass much more than a urethane-based release layer, as is also explained below. Thus, the restriction between a urethane-polyester release film in contrast to every other species of release layer-base layer combinations is maintained.
Claim Rejection - 35 USC § 112 – Written Description
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the full scope of the claimed invention.
The specification fails to demonstrate possession of the full scope of any and all mold release films made of any and all release layers and any and all base layers. Instead, the specification only discloses a single species of mold release film: 5-25 uM isocyanate crosslinked urethane release layers with 38 uM polyethylene terephthalate base layers. In fact, this specific configuration and composition was required to achieve the claimed “elongation rate at break of the mold release layer is 120% or more” when “an average thickness of the mold release layer is 5 μm or more” (Examples; Tables 2 & 4). For example, crosslinked acrylic resin on 38 uM polyethylene terephthalate base layer did not meet this requirement (Table 2). Finally, the specification consistently and exclusively discloses that the invention is this 5-25 uM isocyanate crosslinked urethane release layers with 38 uM polyethylene terephthalate base layers, in contrast to prior art release films (e.g. para. 0001-09). In contrast to this very limited disclosure, the claims encompass any and all release layers and any and all base layers, each of any thickness. A single species fails to provide written description support for a vast genus, especially here where the specification specifically contrasts this single species and its technical characteristics versus prior art.
Thus, Applicants fail to disclose the full scope of their claimed invention with “full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”
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) A person shall be entitled to a patent unless –
(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; or
(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 1-2, 4 and 10-11 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by WALDRON (US5756214A).
As to claims 1-2, 4, WALDRON teaches a mold release film comprising: a mold release layer (polymeric abherent layer with urethane and isocyanate; Abstract, col. 2); and a base material layer (polymeric film substrate, “polyethylene terephthalate and/or polyethylene naphthalate film is preferred”; Abstract, col. 6, ll. 31-55), wherein an elongation rate at break of the mold release layer is 120% or more, and an average thickness of the mold release layer is 5 μm or more (“The release films may vary in thickness depending on the intended application, but films having a total thickness of from 5 to 250, particularly from 10 to 50 μm are of general utility. The dry thickness of the abherent layer is desirably within a range of from 0.01 to 10, preferably 0.02 to 1.0 μm.”)
As to claim 10, the statement of an intended use of a product that “the mold release film is used in transfer molding or compression molding,” fails to further limit the product.
As to 11, WALDRON teaches method for manufacturing a semiconductor package, comprising performing transfer molding or compression molding using the mold release film according to claim 1 (Abstract).
Claims 1-20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by WALDRON (JP2008162222A).
As to claims 1-2, 4, JP2008162222A teaches a mold release film comprising: a mold release layer (“The mold release polyester film for hot press molding is characterized by being obtaining by coating a coating liquid containing a fluorine-containing resin, a block isocyanate crosslinking agent containing polyalkylene glycol chains as essential components onto a polyester film” and “(A-1): Urethane compound having a perfluoroalkyl group (Asahi Guard AG manufactured by Asahi Glass)”; Abstract, Examples 2-6); and a base material layer (“biaxially oriented polyethylene terephthalate film having a film thickness of 38 μm”; Examples 2-6), wherein an elongation rate at break of the mold release layer is 120% or more, and an average thickness of the mold release layer is 5 μm or more (id.)
As to claim 10, the statement of an intended use of a product that “the mold release film is used in transfer molding or compression molding,” fails to further limit the product.
As to 11, JP2008162222A teaches method for manufacturing a semiconductor package, comprising performing transfer molding or compression molding using the mold release film according to claim 1 (Abstract).
As to claims 3, 5 and 12, JP2008162222A teaches the urethane resin includes a constituent unit 1 having an alkylene oxide skeleton (“Block isocyanate cross-linking agent containing polyalkylene glycol chain creates urethane prepolymer having two or more free isocyanate groups by polyaddition method of compound having two or more active hydrogen atoms and excess polyfunctional isocyanate” and “Examples of the compound having two or more active hydrogens include ethylene oxide, propylene oxide and the like, alkylene oxide and the like”).
As to claim 6, JP2008162222A teaches the constituent unit 1 includes at least one of a constituent unit 2 having an ethylene oxide skeleton or a constituent unit 3 having a propylene oxide skeleton (id.)
As to claim 7, JP2008162222A teaches the urethane resin further includes a constituent unit 4 having each urethane bond at both ends of a divalent linking group, and a total content ratio of the constituent unit 2 and the constituent unit 3 is 50 mol % or more with respect to a total of the constituent unit 1 and the constituent unit 4 (“The content of the blocked isocyanate crosslinking agent containing a polyalkylene glycol chain is preferably 5 to 90% by weight, more preferably 10 to 80% by weight, based on the total weight of the coating film”).
As to claim 8, JP2008162222A teaches the constituent unit 1 includes the constituent unit 2 and the constituent unit 3, and a ratio of the constituent unit 2 and the constituent unit 3, i.e., the constituent unit 2: the constituent unit 3 is from 10:90 to 60:40 (see claims 6-7).
As to claim 9, JP2008162222A teaches the urethane resin includes a constituent unit 4 having each urethane bond at both ends of a divalent linking group, and the divalent linking group is a hexamethylene group, a 2,2,4-trimethylhexamethylene group, a 2,4,4-trimethylhexamethylene group, a pentamethylene group, or a tetramethylene group (“Specific examples of the polyfunctional isocyanate include hexamethylene diisocyanate (HMDI)”).
As to claim1 3, JP2008162222A teaches the constituent unit 1 includes at least one of a constituent unit 2 having an ethylene oxide skeleton or a constituent unit 3 having a propylene oxide skeleton (see claims 6-7).
As to claim 14, JP2008162222A teaches the urethane resin further includes a constituent unit 4 having each urethane bond at both ends of a divalent linking group, and a total content ratio of the constituent unit 2 and the constituent unit 3 is 50 mol % or more with respect to a total of the constituent unit 1 and the constituent unit 4 (see claims 6-7).
As to claim 15, JP2008162222A teaches the urethane resin further includes a constituent unit 4 having each urethane bond at both ends of a divalent linking group, and a total content ratio of the constituent unit 2 and the constituent unit 3 is 50 mol % or more with respect to a total of the constituent unit 1 and the constituent unit 4 (see claims 6-7).
As to claim 16, JP2008162222A teaches the constituent unit 1 includes the constituent unit 2 and the constituent unit 3, and a ratio of the constituent unit 2 and the constituent unit 3, i.e., the constituent unit 2:the constituent unit 3 is from 10:90 to 60:40 (see claims 6-7).
As to claim 17, JP2008162222A teaches the constituent unit 1 includes the constituent unit 2 and the constituent unit 3, and a ratio of the constituent unit 2 and the constituent unit 3, i.e., the constituent unit 2:the constituent unit 3 is from 10:90 to 60:40 (see claims 6-7).
As to claim 18, JP2008162222A teaches the constituent unit 1 includes the constituent unit 2 and the constituent unit 3, and a ratio of the constituent unit 2 and the constituent unit 3, i.e., the constituent unit 2:the constituent unit 3 is from 10:90 to 60:40 (see claims 6-7).
As to claim 19, JP2008162222A teaches the urethane resin includes a constituent unit 4 having each urethane bond at both ends of a divalent linking group, and the divalent linking group is a hexamethylene group, a 2,2,4-trimethylhexamethylene group, a 2,4,4-trimethylhexamethylene group, a pentamethylene group, or a tetramethylene group (see claim 9).
As to claim 20, JP2008162222A teaches the urethane resin includes a constituent unit 4 having each urethane bond at both ends of a divalent linking group, and the divalent linking group is a hexamethylene group, a 2,2,4-trimethylhexamethylene group, a 2,4,4-trimethylhexamethylene group, a pentamethylene group, or a tetramethylene group (see claim 9).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELODY TSUI whose telephone number is (571)272-1846. The examiner can normally be reached Monday - Friday, 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heather Calamita can be reached at 571-272-2876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YUNG-SHENG M TSUI/ Primary Examiner, Art Unit 1684
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