DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a 371 of App. No. PCT/JP2023/026547, filed on 07/20/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-126205, filed 08/08/2022. The preliminary amendment filed on 01/10/2025 is entered and acknowledged by the Examiner.
3. Claims 1-8 are pending. Claims 1-8 are under examination on the merits
Information Disclosure Statement
4. The information disclosure statement submitted on 01/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 01/10/2025. These drawings are acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 01/10/2025 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
7. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 102 in FIG. 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
8. Claim 3 is objected to because of the following informalities: It is suggested that “20 parts by mass or more and 100 parts by mass or less" be deleted and " 20 parts by mass to100 parts by mass" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 1, 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikeuchi et al. (JP 2001-018523 A, machine translation, hereinafter “’523”).
Regarding claim 1: ‘523 discloses a protective film as a colored layer (Page 5/15, [0004]), wherein the protective film forming agent comprising a water-soluble resin (A) such as acrylic resin (BR-87), a light absorbing agent (B), at least one plasticizer (C) selected from the group consisting of monosaccharides such as D-glucose, and a solvent (S) such as toluene/cyclohexane (Page 13/15, [0035], Example 1; Page 14/15, [0040], Example 3).
It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claim 6: ‘523 discloses a protective film as a colored layer (Page 5/15, [0004]), wherein the solvent (S) comprises water (Page 13/15, [0035], Example 1).
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 1, 7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Masatoshi Fujimoto (JP 2014-172932 A, machine translation, hereinafter “’932”).
Regarding claim 1: ‘932 teaches a protective film forming agent (Page 7/23. [0001]) for use in forming a protective film on a surface of a semiconductor wafer in dicing the semiconductor wafer (Page 7/23, [0002]), the protective film forming agent comprising a water-soluble resin (A) (Page 17/23, [0051]), a light absorbing agent (B) such as diazonaphtho quinone-based compound (Page 17/23, [0050]), at least one plasticizer (C) selected from the group consisting of polysaccharide (i.e., read on disaccharides) (Page 9/23, [0013]), and a solvent (S) (Page 13/23, [0035]) with benefit of providing a composition for forming a protective film of an electronic component, which is a protective film of an electronic component such as a semiconductor element, has high water resistance, does not dissolve in the presence of water, and can form a protective film having good film quality and film formability (Page 2/23, Abstract).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 7: ‘932 teaches a method of manufacturing a semiconductor chip by processing a semiconductor wafer, the method comprising: forming a protective film by coating the semiconductor wafer with the protective film forming agent claim 1, and irradiating a predetermined position of one or more layers comprising the protective film on the semiconductor wafer with a laser beam to expose a surface of the semiconductor wafer, and to form a processed groove with a pattern according to a shape of the semiconductor chip (Page 16/23, [0050]).
13. Claims 1-8 are rejected under 35 U.S.C. 103(a)as being unpatentable over Kinoshita et al. (WO 2022/153858, equivalent to US Pub. No. 2025/0270417 A1, hereinafter “’417”) or Karasaki et al. (US Pub. No. 2019/0371669 A1, hereinafter “’669”) in view of Isozaki et al. (US Pub. No. 2002/0037946 A1, hereinafter “’946”).
Regarding claims 1,3: ‘417 teaches a protective film forming agent (Page 1, [0001]) for use in forming a protective film on a surface of a semiconductor wafer in dicing the semiconductor wafer (Page 1, [0011]), the protective film forming agent comprising a water-soluble resin (A) (Page 1, [0012]; Page 4, [0047]), a light absorbing agent (B) (Page 1, [0012]; Page 4, [0052]), and a solvent (S) (Page 1, [0012]; Page 7, [0085]), wherein the protective film forming agent may contain other compounding agents (Page 7, [0079]). ‘417 does not expressly teach at least one plasticizer (C) selected from the group consisting of monosaccharides or and disaccharides, wherein a content of the plasticizer (C) is 20 parts by mass or more and 100 parts by mass or less with regard to 100 parts by mass of the water-soluble resin (A1).
Alternatively, ‘669 teaches a protective film formation step, a protective film containing a water-soluble resin is formed by applying, to the front surface 1a of the substrate 1, a mixture containing the water-soluble resin and an organic solvent (first organic solvent) having a higher vapor pressure than water to form a coating film of the mixture, and drying the coating film at a temperature of 50°C or less (Page 4, [0045]), wherein examples of the water-soluble resin include a water-soluble polyester, polystyrene sulfonic acid, polyacrylic acid, polymethacrylic acid, polyacrylamide, 2-acrylamide-2-methylpropane sulfonic acid, polyvinyl pyrrolidone, polyethylene oxide, an oxazol-based water-soluble polymer (e.g., oxazol-2-ethyl-4,5-dihydro-homopolymer), or salts (e.g., alkali metal salt, ammonium salt) thereof. Examples of the alkali metal salt include a lithium salt, a sodium salt, and a potassium salt (Page 4, [0054]). The water-soluble resin may be used alone or in combination of two or more. In view of the fact that the solution can be easily prepared using an organic solvent, and a wide selection of organic solvents is available, it is preferable to use a water-soluble polyester, polystyrene sulfonic acid, an oxazol-based water-soluble polymer, or salts thereof (Page 4, [0054]) in which polystyrene sulfonic acid is equivalent to water-soluble resin (A1) when the aromatic ring is a benzene ring, specifically a polystyrene resin and sulfonic acid is the water-soluble group. ‘669 teaches as the first organic solvent, a water-soluble organic solvent is preferable because of the high affinity for the water-soluble resin. The mixture 26 may further contain water, and the use of a water-soluble organic solvent as the first organic solvent makes the mixture 26 less likely to undergo phase separation even when the mixture 26 contains water, so that it is possible to form a uniform film (Page 5, [0056]). ‘699 further teaches if necessary, the mixture 26 may further contain various additive such as a plasticizer (Page 3, [0042]). From the viewpoint of increasing etching properties during laser grooving, the mixture 26 may optionally contain a photosensitizer that absorbs the laser light irradiated in the laser grooving step (Page 5, [0062]) in which the photosensitizer is equivalent to a light absorbing agent (B). ‘669 does not expressly teach at least one plasticizer (C) selected from the group consisting of monosaccharides or and disaccharides, wherein a content of the plasticizer (C) is 20 parts by mass or more and 100 parts by mass or less with regard to 100 parts by mass of the water-soluble resin (A1).
However, ‘946 teaches a water-soluble film produced by using the water-soluble resin composition (Page 1, [0002]), wherein the water-soluble resin composition which comprises (i) 100 parts by weight of a polyvinyl alcohol polymer having a 1,2-glycol linkage content of at least 1.8 mole percent and a degree of hydrolysis of at least 90 mole percent, (ii) 1 to 50 parts by weight of a plasticizer and (iii) 5 to 50 parts by weight of a monosaccharide and/or a polysaccharide (Page 1, [0008]; Page 13, Claims 1,10) with benefit of providing a water-soluble resin composition, wherein the amount of the monosaccharide and/or polysaccharide is 5 to 50 parts by weight, preferably 10 to 35 parts by weight, based on 100 parts by weight of PVA. When the amount is less than 5 parts by weight, the desired improving effect on the rate of dissolution of the product films in water will not be produced. Conversely, if the amount is more than 50 parts by weight, the product films will be low in strength. For the product films to have good antiblocking properties, an amount of more than 10 parts by weight is preferred (Page 4, [0030]).
In an analogous art of the protective film forming agent for use in forming a protective film on a surface of a semiconductor wafer in dicing the semiconductor wafer, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the water-soluble resin composition by ‘417 or ‘’69, so as to include at least one plasticizer (C) selected from the group consisting of monosaccharides or and disaccharides as taught by ‘946, and would have been motivated to do so with reasonable expectation that this would result in providing a water-soluble resin composition, wherein the amount of the monosaccharide and/or polysaccharide is 5 to 50 parts by weight, preferably 10 to 35 parts by weight, based on 100 parts by weight of PVA. When the amount is less than 5 parts by weight, the desired improving effect on the rate of dissolution of the product films in water will not be produced. Conversely, if the amount is more than 50 parts by weight, the product films will be low in strength. For the product films to have good antiblocking properties, an amount of more than 10 parts by weight is preferred as suggested by ‘946 (Page 4, [0030]).
Regarding claim 2: ‘417 teaches the protective film forming agent (Page 1, [0001]),
, wherein the water- soluble resin (A) comprises a water-soluble resin (A1) having an aromatic ring and a water- soluble group (Page 1, [0012]-[0013]; Page 2, [0032]).
Regarding claim 4: ‘417 teaches the protective film forming agent (Page 1, [0001]), wherein the water- soluble resin (A1) comprises a resin having a phenolic hydroxyl group (Page 2, [0034]; Page 3, [0039]).
Regarding claim 5: ‘417 teaches the protective film forming agent, wherein the water- soluble resin (A) comprises a polyvinyl alcohol-based resin (Page 4, [0047]).
Regarding claim 6: ‘417 teaches the protective film forming agent, wherein the solvent (S) comprises water (page 7, [0085]).
Regarding claim 7: ‘417 teaches the method of manufacturing the semiconductor chip by processing a semiconductor wafer (Page 1, [0014]), the method comprising: forming a protective film by coating the semiconductor wafer with the protective film forming agent (Page 2, [0028]), and irradiating a predetermined position of one or more layers comprising the protective film on the semiconductor wafer with a laser beam to expose a surface of the semiconductor wafer, and to form a processed groove with a pattern according to a shape of the semiconductor chip (Page 1, [0016]; Page 2, [0029])).
Regarding claim 8: ‘417 teaches the method of manufacturing the semiconductor chip, further comprising cutting the semiconductor wafer at a position of the processed groove (Page 9, [0111]).
Prior-Art Cited But Not Applied
14. Any prior-art reference which is cited on FORM PTO-892 but not applied is cited of interest to show the general state of the prior-art at the time of the application’s invention. Please see Chen et al. (CN104744987 A, machine translation, hereinafter “’987”).
‘987 teaches a solution for forming the protective layer, a method of manufacturing and a method of use thereof. The solution is used to form a protective layer on the chip. The solution comprises: a water-soluble resin, a water-soluble solvent and a laser absorbent, and the plasticizer. The solvent includes water and an organic solvent, with the weight ratio of 3 to 17.
Examiner Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
06/09/2026
bijan.ahvazi@uspto.gov
Prosecution Insights