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 .
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noda et al. (US 2007/0077685 A1, “Noda”).
With respect to claims 1-3 and 6, Noda discloses a laminated body having a photothermal conversion layer disposed on a light-transmitting support that is used in preparing a semiconductor wafer (i.e., an electronic part) ([0007]). The semiconductor wafer is bonded to the laminate by using an adhesive ([0007]). The photothermal conversion layer contains a light-absorbing agent and a heat decomposable resin ([0047]); the light-absorbing agent is carbon black ([0048]). The photothermal conversion layer further includes a photopolymerization initiator in order to cure the resin (i.e., the resin is a curable resin composition) ([0052]). The adhesive is removed ([0038]) and therefore the sheet is used to temporarily fix an electronic part. While there may be no explicit disclosure from Noda regarding the sheet having a transmittance for light having a wavelength of 1,032 nm of 60% or less, a transmittance for light having a wavelength of 355 nm of 60% or less, and a 5% weight loss temperature after UV irradiation of 300°C or more, given that Noda discloses an otherwise identical sheet made from otherwise identical layers made from otherwise identical compositions as that presently claimed, it is clear the sheet of Noda would necessarily inherently possess these properties, absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). In accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Akasu et al. (WO 2023/032165 A1, “Akasu”). The disclosure of Akasu is based off US 2025/0273502 A1, which serves as an English language equivalent.
With respect to claims 1-6, Akasu discloses a film for temporarily fixing a semiconductor member (i.e., an electronic part) and support member ([0006]). The film contains carbon black and a curable resin component ([0006]). The curable resin component is component (B) ([0038]), which is a thermoplastic resin and a thermosetting resin ([0048]). The thermoplastic resin is a hydrocarbon resin including styrene copolymers (i.e., styrene-based thermoplastic elastomers) ([0049-0050]). The component (B) further includes a polymerizable monomer including polyfunctional (meth)acrylates with trifunctionality or higher functionality, including pentaerythritol tri(meth)acrylate ([0062], [0065]). The component (B) further includes polymerization initiators which initiate polymerization by irradiation with ultraviolet light or a photoradical polymerization initiator ([0062], [0067]) (i.e., a photopolymerization initiator). As can be seen in Fig. 2A below, the temporary fixing material layer 10A has a surface on a side opposite the support member 22 ([0090]); the support member 22 corresponds to the claimed base material. While there may be no disclosure regarding the film being a photothermal conversion layer as presently claimed, given that Akasu discloses an otherwise identical film made from otherwise identical components as that presently claimed, it is clear the film of Akasu would necessarily inherently be a photothermal conversion layer as presently claimed. Similarly, while there may be no disclosure from Akasu regarding the sheet having a transmittance for light having a wavelength of 1,032 nm of 60% or less, a transmittance for light having a wavelength of 355 nm of 60% or less, and a 5% weight loss temperature after UV irradiation of 300°C or more, given that Akasu discloses an otherwise identical sheet made from otherwise identical layers made from otherwise identical compositions as that presently claimed, it is clear the sheet of Akasu would necessarily inherently have these properties, absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). In accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
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Fig. 2A
Response to Arguments
Applicant's arguments filed 24 September 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) rejections of record, Applicant argues the claimed property of the photothermal conversion layer having a 5% weight loss temperature after UV irradiation of 300°C or more is not inherent. Specifically, Applicant points to Comparative Examples 3 and 4 as support for this position because Comparative Examples 3 and 4 allegedly disclose photothermal conversion layers containing carbon black and a resin that do not satisfy the 5% weight loss temperature after UV irradiation of 300°C or more; Applicant cites the instant specification [0095], [0097], and Table 3 for support. The examiner respectfully disagrees for the reasons below.
In response to Applicant’s arguments, the basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references disclose all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not.
Further, in response to Applicant’s reliance on Comparative Examples 3 and 4 for support that the claimed property is not inherent, this is not found persuasive because the instant specification is unclear regarding the compositions of the photothermal conversion layers of Comparative Examples 3 and 4. The examiner acknowledges that the specification, [0095] on pages 64-66 discloses Comparative Example 3 using a black printing ink NB300 with carbon black and mixed with an isocyanate-based curing agent to prepare a composition C3, and [0096] on pages 66-67 disclose Comparative Example 4 uses a black printing ink CVL-PR with carbon black and mixed with an isocyanate based curing agent to prepare a composition C4. However, Table 3 discloses Comparative Examples 3 and 4 use a composition “i” for forming a resin layer as composition for forming the photothermal conversion layer; see instant specification, page 71. Composition “i” is disclosed as a resin layer prepared in the same manner as Production Example 2, except carbon black was not added; see instant specification, pages 59-60, [0087]. Therefore, it is unclear if the photothermal conversion layer of Comparative Examples 3 and 4 are made from the compositions C3 and C4 found in [0095-0096], or if the photothermal conversion layers of Comparative Examples 3 and 4 the non-carbon-black-containing composition “i”, and thus it is unclear if Applicant has demonstrated the claimed property is not inherent.
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E 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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
