DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 2-3 and the addition of claims 15-16 in the amendments filed 7/2/2026.
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 .
Response to Amendment
Applicant’s arguments, see the amendments to the specification and the remarks filed 7/2/2026, with respect to the objection to the specification as set forth in paragraph 4 of the action mailed 4/2/2026, have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and/or exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
Table 1, Synthesis Example 3 (A3) is the only inventive example that has non-zero moles of the (m-2) monomer even though all the Synthesis Examples 1-7 (A1-A7) have a mol% for (m-2) that is non-zero.
The Examiner requests that the Applicant conduct a full and thorough review of the data presented in Tables 1-2 of the specification as originally filed for self-consistency with itself and the presently claimed invention.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4-6 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takai et al. (US 2020/0339724 A1), and in light of the evidence provided by Kanner et al. (US 7070051 B2), Satake et al. (US 5814685), Matsumura et al. (US 7863182 B2) and Fukui (US 6995193 B1).
Regarding claim 1, Takai teaches active energy ray curable compositions towards pressure-sensitive adhesives (PSA composition) (para 0106) comprising a (meth)acrylic block copolymer ((meth)acrylic resin (A)) having a diblock structure (diblock copolymer); and comprising a methacrylic polymer block (A) (X block) having an active energy ray curable group with a partial structure (1) of general formula (1), and acrylic polymer block (B) (Y block) (para 0008-0010, 0047). The composition further comprises a photopolymerization initiator (para 0085) and reactive diluents providing polymerizability via radiation (crosslinking agent (C)) (para 0093).
In addition to the monomer(s) comprising general formulae (1) or (2) having said partial structure (1) (para 0023-0027), Takai also teaches that the polymer block (A) comprises:
monomer units derived from a monofunctional methacrylate ester having one methacryloyl group such as, inter alia, 2-hydroxyethyl methacrylate and n-butyl methacrylate in an amount of 50 to 99.9 mol% relative to all monomers comprising said polymer block (A) (para 0029-0032); and,
monomer units derived from additional monomers other than monomers comprising general formulae (1) or (2) having said partial structure (1) and monomer units derived from a monofunctional methacrylate ester having one methacryloyl group such as, inter alia, 2-hydroxyethyl acrylate (structural unit (M-1) having a hydroxy group) in an amount of not more than 10 mass% relative to all monomers comprising said polymer block (A) (para 0033-0034).
While Takai discloses the proportions of the additional monomer(s) (i.e., the structural unit (M-1) having a hydroxy group) in mass% (i.e., not more than 10 mass%) rather than mol%, the Examiner notes that the carbon-carbon double bond of partial structure (1) provides the polymer block (A) (i.e., the X block) with an ethylenically unsaturated group (structural unit (M-2)). Takai also discloses that the monomers providing said partial structure (1) are present at 1.0 to 30 mol% towards active energy ray curability (para 0023-0028), which is identical to that presently claimed (15 to 30 mol% relative to 100 mol% of the X block, see also the obviousness statement below).
In addition, the Examiner also notes that it is established in the art that the glass transition temperature (Tg) of a polymer (or in the current instance, the Tg of a polymer block) is proportional to the Tg of the monomers comprising said polymer block, and their respective proportions, as evidenced via Satake (see column 4, lines 4-19 therein). Further, the Tg of a polymer comprising a PSA composition is selected based on the balance of tack, peel and cohesion required of a particular application as evidenced via Kanner (see column 8, line 58 to column 9, line 8 therein). See column 16, lines 31-32 of Matsumura, which demonstrates that 2-hydroxyethyl acrylate has a Tg = -25 ℃; and column 4, line 66 of Fukui, which demonstrates that n-butyl methacrylate has a Tg = 20 ℃.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polymer block (A) with the additional monomer(s) (i.e., the structural unit (M-1) having a hydroxy group) in the presently claimed proportional range (1.5 to 10 mol%); the monomer comprising the partial structure (1) (i.e., structural unit (M-2)) in the presently claimed proportional range (i.e., 15 to 30 mol%); and the two noted monomers in the combined proportional range presently claimed (i.e., 18 to 40 mol%) based on the balance of active energy ray curability, tack, peel and cohesion required of the prior art’s intended application as in the present invention.
Continuing, the content of polymer block (A) (i.e., the X block) is 1 to 70 mass% of the (meth) acrylic block copolymer towards a balance of excellent curing rate and a resultant cured product demonstrating excellent flexibility (para 0037). Takai further teaches that polymer block (B) (i.e., Y block) comprises acrylate esters such as, inter alia, 2-ethylhexyl acrylate in an amount of 100 mass% (70 mol% or more relative to 100 mol% of the structural units in the Y block), and comprises 30 to 99 mass% of the (meth) acrylic block copolymer towards a balance of excellent curing rate and a resultant cured product demonstrating excellent flexibility (para 0038-0045).
The Examiner notes that 2-ethylhexyl acrylate is a branched alkyl (meth)acrylate having 8 carbon atoms in the alkyl group, which is identical to that presently disclosed (see, for example, para 0054 of the originally filed specification) for providing the presently claimed ethylenically unsaturated compound (m-3) having an SP value of 20 (J/cm3) or less to the Y block; and further teaches that the Y block provides structural unit (M-3) derived from a (meth)acryloyloxy group.
The present recitation of structural units (M-1) and (M-2) comprising the Y block are optional, and thus the prior art need not teach that polymer block (B) (i.e., the Y block) comprises structural units (M-1) and (M-2), nor that they are included in the Y block at 0 to 17 mol%, in order to teach or render obvious these claim limitations.
While Takai does not provide the proportions of the polymer block (A) and the polymer block (B) in terms of molar ratio (i.e., 40:60 to 95:5), as noted above, Takai does disclose that the content of polymer block (A) is 1 to 70 mass% and the content of the polymer block (B) is 30 to 99 mass% towards a balance of excellent curing rate, and a resultant cured product demonstrating excellent flexibility. In addition, Takai teaches that the number average molecular weight (Mn) of polymer block (A) is 500 to 100,000 (para 0035), and the Mn of polymer block (B) is 3,000 to 300,000 (para 0044).
Thus, given that the mass% and Mn values of each of block (A) and block (B) overlap (e.g., 50 mass% block (A) and 50 mass% block (B); 50,000 g/mol for both block (A) and block (B)), there would necessarily be an overlap with the molar ratio of that presently claimed (i.e., a molar ratio of 1:1).
When faced with a mixture, one of ordinary skill in the art would be motivated by
common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount,
absent evidence of unexpected or surprising results. Case law holds that "[h]aving
established that this knowledge was in the art, the examiner could then properly rely... on
a conclusion of obviousness, 'from common knowledge and common sense of the person
of ordinary skill in the art within any specific hint or suggestion in a particular
reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside
ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re
Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16
USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound
or compositions in concentrations within or overlapping the claimed concentrations a
prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74
USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d
1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934,
1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553
(CCPA 1974).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polymer block (A) and the polymer block (B) in the presently claimed molar ratio towards the PSA composition of Takai demonstrating the balance of excellent curing rate (via energy ray curing of partial structure (1)), and a resultant cured product demonstrating excellent flexibility, based on the requirements of the prior art’s intended application as in the present invention.
Regarding claim 4, Takai teaches that the partial structure (1) (i.e. the ethylenically unsaturated group) is introduced into the polymer block (A) via polymerizing a monomer comprising a polymerizable (meth)acryloyl group and comprising a hydroxy group (e.g., the above noted 2-hydroxyethyl methacrylate and/or 2-hydroxyethyl acrylate) (para 0078) reacted with an isocyanate group; the former of which provides a structural unit derived from an ethylenically unsaturated compound (m-1) having a hydroxy group, and the latter of which is a compound comprising BOTH a partial structure reactive with the hydroxyl group (i.e., a isocyanate group) and said particle structure (1) (isocyanato-group-containing ethylenically unsaturated compound (a)) (para 0078-0082).
Regarding claim 5, as noted above, Takai teaches that the polymer block (B) (i.e., Y block) comprises the acrylate esters such as, inter alia, 2-ethylhexyl acrylate in an amount of up to 100 mass% (80 mol% or more relative to 100 mol% of the structural units in the Y block).
Regarding claim 6, as noted above, Takai teaches that the polymer block (B) (i.e., Y block) comprises the acrylate esters such as, inter alia, 2-ethylhexyl acrylate (branched alkyl (meth)acrylate having 8 carbon atoms).
Regarding claim 8, as noted above, polymer block (A) (i.e., block (X)) comprises n-butyl methacrylate, which comprises a linear alkyl (meth)acrylate having 4 carbon atoms.
Regarding claims 9-11, Takai teaches that the Mn of the (meth)acrylic block copolymer is 4,000 to 400,000 towards handleability, viscosity and mechanical characteristics, and with a molecular weight distribution (i.e., Mw/Mn) of 2.00 or less (para 0046), which provides the weight-average molecular weight (Mw) of an upper limit range of 8,000 to 800,000, which overlaps that presently claimed (1 × 104 to 200 × 104 or 10,000 to 2,000,000).
In addition, while Takai does specify an equivalent for the partial structure (1) or a hydroxyl value for the remaining hydroxy groups following reaction with the compound (C), as noted above, Takai instructs that the energy ray curability is by the ethylenic unsaturation of partial structure (1).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the Mw, ethylenically unsaturated group equivalent and the hydroxy value (based on the hydroxy groups unreacted in the formation of the ethylenically unsaturated group equivalent) to that presently claimed for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the PSA composition of the cited prior art demonstrating the handleability, viscosity, mechanical characteristics and energy ray curability as required by the prior art’s intended application as in the present invention.
Claim(s) 7 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takai et al. (US 2020/0339724 A1) in view of Tobing et al. (US 2014/0066539 A1).
Regarding claims 7 and 15-16, Takai teaches the PSA compositions comprising active energy ray curable compositions comprising a (meth)acrylic block copolymer as in the rejection of claims 1, 4-6 and 8-11 as set forth above, but is silent to the block polymer (B) (i.e., the Y block) comprising styrene.
However, Tobing teaches PSA compositions comprising an acrylic block copolymer and UV-curable copolymer (abstract), wherein the block copolymer comprises polymer blocks (A) and (B), the former of which comprises styrene towards increasing the glass transition temperature (Tg) (para 0017).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polymer block (B) with styrene monomer towards increasing the Tg of said block (B) based on the Tg of block (B) and the overall PSA as required of the prior art’s intended application as in the present invention.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takai et al. (US 2020/0339724 A1) in view of Kakiuchi et al. (US 2018/0286736 A1).
Regarding claim 12, Takai teaches the PSA compositions as in the rejection of claims 1, 4-6 and 8-11 as set forth above, but is silent to the presently claimed PSA sheet comprising a base material and a PSA layer.
However, Takai does instruct that the inventive compositions are employed as PSAs and in applications in semiconductors (para 0106).
In addition, Kakiuchi teaches a sheet for semiconductor processing (PSA sheet) comprising, in order, a base/unevenness absorbing layer (base material layer) and cured PSA layer (photothermally cured PSA layer) composed of an energy ray curable PSA (para 0010-0011).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ Takai’s PSA composition to form the PSA layer of Kakiuchi towards a PSA sheet for applications in semiconductor processing as in the present invention.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takai et al. (US 2020/0339724 A1) in view of Kakiuchi et al. (US 2018/0286736 A1).
Regarding claim 13, Takai/Kakiuchi teaches the sheet for semiconductor processing as in the rejection claim 12 set forth above. Kakiuchi also teaches that the sheet is used as a dicing sheet (para 0156).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takai et al. (US 2020/0339724 A1) in view of Kakiuchi et al. (US 2018/0286736 A1) and in further view of Matsumura et al. (US 2013/0034935).
Regarding claim 14, Takai/Kakiuchi teaches the dicing sheet as in the rejection of claim 13 set forth above, but is silent to the dicing sheet further comprising a die bonding film.
However, Matsumura teaches a dicing die-bonding film (10) comprising a dicing film comprising a PSA layer (2) on a support base material (1) and a die-bonding film (3) (adhesive layer) provided on PSA layer (2) (para 0024; Fig. 1). The PSA layer is a radiation curing-type PSA comprising a carbon-carbon double bond (para 0048).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the dicing sheet of Takai/Kakiuchi in a dicing/die-bonding film as in the present invention.
Response to Arguments
Applicant’s arguments, see the amendments to the specification and the remarks filed 7/2/2026, with respect to the rejections of claims 1-6 and 8-11 over Takai et al. in view of Kakiuchi et al. under 35 U.S.C. 103; claim 7 over Takai et al. in view of Kakiuchi et al. and in further view of Tobing et al. under 35 U.S.C. 103; claim 12 over Kakiuchi et al. in view of Takai et al. under 35 U.S.C. 103; claim 13 over Kakiuchi et al. in view of Takai et al. under 35 U.S.C. 103; and claim 12 over Kakiuchi et al. in view of Takai et al. under 35 U.S.C. 103 as set forth in paragraphs 7-11 of the action mailed 4/2/2026, have been fully considered but they are not persuasive.
The Examiner respectfully submits that the Applicant’s arguments in regards to the presently claimed invention demonstrates a balance of water resistance and adhesion (and releasability after UV radiation), and thus distinguish over the cited prior art, is not persuasive. First it is respectfully submitted that one skilled in the art would recognize that UV-curing of a polymer comprising C=C double bonds would promote releasability of the respective PSA composition comprising said polymer (see, for example, para 0005 of US 2003/0012949 A1). Second, the skilled artisan would have been apprised that a block polymer comprising a high amount of non-polar monomeric components (e.g., the 2-ethylhexyl acrylate comprising the polymer block B of Takai) and a small amount (indeed, 0%) of polar components (e.g., hydroxyl group-containing monomers) would contribute to the hydrophobic properties of the resultant block copolymer (and thus resistance to polar water molecules).
Moreover, the Applicant is respectfully reminded that,
As set forth in MPEP 716.02(d), whether unexpected results are the result of
unexpectedly improved results or a property not taught by the prior art, “objective
evidence of nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In other words, the showing of unexpected results must
be reviewed to see if the results occurred over the entire claimed range, In re Clemens,
622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of 40:60 to 95:5 for the presently claimed molar ratio between block X and block Y. The data is not representative of the upper and lower limits of said molar ratio range; nor does the data provide a proper comparison with the comparative examples as said comparative examples do not demonstrate “unacceptable” results for molar ratio values immediately below and above that presently recited.
Lastly, it is respectfully submitted that a proper analysis of the commensuration, or lack thereof, of the claimed invention in regards to the mol% of the presently claimed monomeric proportions for the X and Y blocks is not available due to the lack of data. Considering the amendments to the specification in providing legible Tables 1-2, the Examiner notes that Synthesis Examples 1-2 and 4-7 (A1-A2 and A4-A7) do not include monomer (m-2) (i.e., the isopropenyl methacrylate). Also, the numerical values of the monomeric components m-1 to m-3 are given in mols that add up to 100 mol, but the (m-3) component is part of the Y block, and thus a comparison of the mol% of (M-1), (M-2), and the combination thereof presently claimed, relative to all the structural units of the X block, does not appear possible. The mol% of the (M1), (M-2) and (M-3) units based on 100 mol% of the total structural units in the Y block also lacks commensuration.
With respect to the remainder of the Applicant’s arguments against the prior art rejections, the Applicant’s attention is respectfully directed to the updated prior art rejections set forth above, wherein it is noted that the cited prior art teaches or renders obvious all the limitations of the presently claimed invention. The Examiner respectfully submits that the above-noted prior art rejections, which have also been amended in response to the amendments to the claimed invention, constitute a fair and complete response to the Applicant’s current arguments.
In regards to claims 7 and 15-16, Takai/Tobing teaches that the polymer (B) comprises styrene. One skilled in the art would have been apprised to include styrene as monomeric component in polymer block (B) in a proportion that provided the increase in the Tg as cited above, but with a proportion that further provided the flexibility of the resultant PSA composition based on the tolerances, the properties, the balance of properties, etc. required of the specific application.
However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by the Applicant regarding Takai/Tobing teaching away from the presently claimed invention of current claims 7 and 15-16 must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 7/24/2026
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