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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-3 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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Conclusion
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-Friday 07:30-16:00 Eastern.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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