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
Applicant’s election without traverse of Species (B) in the reply filed on 3/5/2026 is acknowledged.
However, after further consideration, the Examiner has determined that the restriction was unnecessary, and thus nonelected claim 8 has been rejoined and examined as set forth below.
Specification
The disclosure is objected to because of the following informalities: portions of the Tables are not legible.
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6 and 8-11 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 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, 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).
Takai also teaches that the methacrylic polymer block (A) comprises monomer units in addition to those comprising general formulae (1) or (2) having said partial structure (1) such as, inter alia, n-butyl methacrylate and 2-hydroxyethyl methacrylate (structural unit (M-1) having a hydroxy group) in an amount of 50 to 99.9 mass% (para 0025, 0029-0032). The content of methacrylic polymer block (A) 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). The Examiner notes that the carbon-carbon double bond of partial structure (1) provides the methacrylic polymer block (A) (i.e., X block) with an ethylenically unsaturated group (structural unit (M-2)).
Takai further teaches that acrylic polymer block (B) (i.e., Y block) comprises acrylate esters such as, inter alia, 2-ethylhexyl acrylate in an amount of not less than 90 mass%, 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 acrylic 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 methacrylic polymer block (A) and the acrylic 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 methacrylic polymer block (A) is 1 to 70 mass% and the content of the acrylic 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 methacrylic polymer block (A) is 500 to 100,000 (para 0035), and the Mn of acrylic 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 methacrylic polymer block (A) and the acrylic 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.
As noted above, Takai discloses that the methacrylic polymer block (A) comprises monomer units such as, inter alia, n-butyl methacrylate and 2-hydroxyethyl methacrylate in an amount of 50 to 99.9 mass%. Takai also instructs that the partial structure (1) is provided in methacrylic polymer block (A) (i.e., X block) at 0.1 to 50 mol% in terms of energy ray curability (para 0023), but does not teach that the monomers such as 2-hydroxyethyl methacrylate (M-1) and a monomer comprising the partial structure (1) (M-2) are present in total amount of 18 to 95 mol% relative to 100 mol% of methacrylic polymer block (A).
However, 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 precursor structure such as, inter alia, a hydroxy group (e.g., the above-noted 2-hydroxyethyl methacrylate) (para 0078) or an isocyanate group, the latter of which is reacted with a compound comprising BOTH a partial structure reactive with the isocyanate group (i.e., a hydroxyl group) and said particle structure (1) (para 0082).
In addition, Kakiuchi teaches a sheet for semiconductor processing comprising an energy ray curable PSA layer (para 0015-0017) comprising an acrylic PSA comprising an acrylic polymer (b) comprising polymer block (B) having reactive functional groups which are in turn bound to an unsaturated group-containing compound (C) towards introducing an unsaturated group into the side thereof. Part of the reactive functional groups of polymer block (B) remain unreacted with compound (C) towards providing crosslinking points to said polymer block (B) (para 0025-0027).
Kakiuchi also teaches that the reactive functional group of polymer block (B) is a hydroxy group from compounds such as, inter alia, 2-hydroxyethyl methacrylate (para 0041-0042), and that the compound (C) comprises an isocyanate group and a (meth)acryloyl group such as, inter alia, (meth)acryloyloxyethyl isocyanate (para 0052-0054). Kakiuchi instructs that 55 to 95 mol% of the reactive functional group (i.e., hydroxy group) react with compound (C) (para 0055-0056).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to react the hydroxy functionality of the methacrylic polymer block (A) of Takai with the (meth)acryloyl group-containing isocyanate group of Kakiuchi towards the methacrylic polymer block (A) comprising the presently claimed mol% (18-95 mols%) proportions of the 2-hydroxyethyl methacrylate-compound (C) structural unit (M-2) and the remaining proportions of the 2-hydroxyethyl methacrylate structural unit (M-1) based on the energy ray curability and the remaining crosslinking points required of the prior art’s intended application as in the present invention.
Regarding claims 2-3, as noted above, Takai/Kakiuchi instructs the skilled artisan as to the motivation for employing the compound (C) in proportions that provide the methacrylic polymer block (A) with energy ray curability in tandem with remaining hydroxy functionality comprising towards toward generating crosslinking points.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to react the hydroxy functionality of the methacrylic polymer block (A) of Takai with the (meth)acryloyl group-containing isocyanate group of Kakiuchi towards the methacrylic polymer block (A) comprising the presently claimed mol% of the 2-hydroxyethyl methacrylate-compound (C) structural unit (M-2) (1 to 60 mol%) and the remaining proportions of the 2-hydroxyethyl methacrylate structural unit (M-1) (0.1 to 35 mol%) based on the energy ray curability and remaining crosslinking points as required of the prior art’s intended application as in the present invention.
Regarding claim 4, as noted above, Takai/Kakiuchi teaches that the ethylenically unsaturated group of the methacrylic polymer block (A) is provided via a reaction between the (meth)acryloyloxyethyl isocyanate compound (C) (isocyanato-group-containing ethylenically unsaturated compound (a)) and the 2-hydroxyethyl methacrylate unit (structural unit derived from an ethylenically unsaturated compound (m-1) having a hydroxy group) of the methacrylic polymer block (A).
Regarding claim 5, Takai teaches that the acrylic 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% (para 0042), which would equate to a mol% of 70 mol% or more.
Regarding claim 6, as noted above, Takai teaches that the acrylic 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, methacrylic 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 (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/Kakiuchi 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/Kakiuchi instructs that the energy ray curability is by the ethylenic unsaturation of partial structure (1) and remaining hydroxy groups provide crosslinking sites to the (meth)acrylic block copolymer.
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 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, energy ray curability and crosslinking as required by the prior art’s intended application as in the present invention.
Claim(s) 7 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 Tobing et al. (US 2014/0066539 A1).
Regarding claim 7, Takai/Kakiuchi teaches the teaches the PSA compositions comprising active energy ray curable compositions comprising a (meth)acrylic block copolymer as in the rejection of claims 1-6 and 8-11 as set forth above, but is silent to acrylic block polymer (B) comprising styrene.
However, Tobing teaches PSA compositions comprising an acrylic block copolymer and UV-curable copolymer (abstract), wherein the acrylic 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 the acrylic 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 Kakiuchi et al. (US 2018/0286736 A1) in view of Takai et al. (US 2020/0339724 A1).
Regarding claim 12, Takai/Kakiuchi teaches the PSA compositions comprising active energy ray curable compositions comprising a (meth)acrylic block copolymer as in the rejection of claims 1-6 and 8-11 as set forth above.
Kakiuchi also 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).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi et al. (US 2018/0286736 A1) in view of Takai et al. (US 2020/0339724 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 Kakiuchi et al. (US 2018/0286736 A1) in view of Takai et al. (US 2020/0339724 A1).
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 Kakiuchi/Takai in a dicing/die-bonding film as in the present invention.
Conclusion
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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 3/30/2026