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 .
Specification
The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825, must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text. See 37 CFR 1.52(a) and (b).
The application papers are objected to because Table I on page 31 of the instant specification is illegible.
A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2020061423 (wherein all textual citations are to the English machine translation provided).
Regarding Claims 1-5, JP2020061423 teaches a pressure sensitive adhesive for semiconductor wafer processing (See page 2, paragraph [0001] and page 50, paragraph [0065]), comprising:
a base material [11] (See Fig. 1 and page 16, paragraph [0020]);
a pressure sensitive adhesive layer [12] formed of an active energy ray-curable pressure sensitive adhesive (See pages 8-9, paragraphs [0011]-[0012], pages 15-16, paragraphs [0020]-[0021], page 33, paragraph [0045], and page 42, paragraph [0057], wherein the adhesive is radiation through active energy and is natural tacky, i.e. pressure sensitive).
JP2020061423 is silent on the surface energy and elements of quotient Y for the disclosed adhesive [12], but such properties are inherent in any polymer structure. Further, JP2020061423 discloses nearly identical adhesives for adhesive [12] as those taught by Applicant for the preferred active energy ray-curable pressure sensitive adhesive. Specifically, JP2020061423 teaches the adhesive [12] is formed from a base acrylic polymer derived from a monomers of 100 moles of 2-ethylhexyl acrylate (2-EHA) and 20 moles of 2-hydroxyethyl acrylate (HEA) (See pages 111-112, paragraph [0156], wherein 100/120=0.833 or 83.3 mol% 2EHA, which is a (meth)acrylic monomer as in claim 2 having a side chain of 8 carbons or more; and 20/120=0.167 or 16.7% HEA, which is a high-polarity hydroxy containing monomer having a side chain of 4 carbons or less as in Claims 3-5). JP2020061423 then teaches adding 16 mols 2-methacryloyloxyethyl isocyanate (MOI) and dibutyltin dilaurate to the acrylic polymer (See page 112, paragraph [0157], note 16 moles MOI is 80 mol % of the 20 mols of HEA), and then a photopolymerization initiator and polyisocyanate to form the radiation/UV-curable acrylic adhesive to form adhesive [12] (See page 113, paragraph [0158]) to be disposed on the based (See pages 113-114, paragraphs [0159]-[0160]).
The adhesive [12] prepared in JP2020061423 is essentially identical to the adhesive prepared by the Applicant for their grinding tape. Applicant teaching 89% by weight 2EHA (i.e. 83.6 mol%) and 11% by weight HEA (i.e. 16.4%) to form and essentially identical acrylic polymer (See instant USPgPub 2025/0253183, page 8, paragraph [0085]) that is then reacted with an identical amount of MOI, i.e. 80 mol %, with dibutyltin dilaurate (See id, page 8, paragraph [0086]), and finally reacted with a photopolymerization initiator and polyisocyanate to form the radiation/UV-curable acrylic adhesive utilized for the PSA on the tape to achieve the claimed properties (See page 9, paragraphs [0087]-[0088]), the same process recited in JP2020061423.
Since JP2020061423 teaches an effectively identical adhesive to that utilized in the preferred examples to achieve the claimed properties, and well within the claimed ranges of all composition limitations, it is reasonable to expect this adhesive to include nearly identical properties, including the recited surface free energy and tack-ratio relationship. As such, Examiner submits the radiation/UV-curable acrylic adhesive [12] disclosed in JP2020061423 inherently possesses the claimed relationship Y>0.01X-0.21. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claims, but the function is not explicitly disclosed by the reference, these properties are reasonably deemed to be inherent in the structure of the prior art. Case law has well established that when the Examiner cannot concretely ascertain the properties possessed by the prior art but it is reasonable to presume that the prior art would possess claimed properties due to a similar composition, there is a reasonable basis for shifting the burden to Applicant to provide evidence the prior art does not possess the claimed properties. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975); In re Best 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); see also MPEP 2112 V.
Examiner also notes the surface free energy term (X) is governed by the chemistry presented at the adhesive surface and a base polymer composed predominantly (83 mol%) of 2-ethylhexyl acrylate presents a surface dominated by long, branched, nonpolar alkyl side chains, with only a minor (17 mol%) hydroxy-bearing fraction contributing polarity, so the layer is expected to exhibit a low surface free energy, i.e. close to 21 mN/m. The tack term is governed by the bulk viscoelasticity of the layer, the same high 2-EHA content yields a low glass-transition temperature and a soft, dissipative adhesive, which is the behavior associated with the recited tack ratio. A composition with a high content of long-chain (C8+) alkyl (meth)acrylate thus tends toward both a low surface free energy and a dissipative tack response, the characteristics in which the claimed relationship is satisfied, and would not be expected to fall in the opposing high-surface-energy, low-dissipation regime.
The fact JP2020061423 discloses 2EHA well above the 60 mol % threshold required in Claim 2 and HEA well below the 39 mol % and fully within the ranges of Claims 3-5 is strong evidence the prior art adhesive falls well within the claimed range defined by the equation. Examiner also notes any adhesive with a low surface energy below 21 mN/m will always satisfy the equation because any X value below 21 would make the right side of the equation negative when Y can never be below zero, thus making it always satisfied when X<21.
Regarding Claims 7-12, Examiner submits “backing grinding tape” does not recite any specific structural features of the tape other than the tape at least theoretically being capable of adhering to a semiconductor during backgrinding (intended use), which virtually any tape capable of being secured to a semiconductor satisfies. Since the tape in JP2020061423 has all the structural characteristics of the claimed tape and is used on semiconductor wafers for processing, Examiner submits it could have been used for various processing including backgrinding and thus is reasonably considered a backgrinding tape as claimed. If Applicant envisions specific structural features that are unique to their backgrinding tape, they should recite them explicitly or else expect broad interpretation of an intended use recitation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2020061423 as applied to claim 1, and further in view of Sato et al. (US 2019/0055396).
Regarding Claim 6, JP2020061423 teaches the method of Claim 1 as described above. JP2020061423 doesn’t teach an intermediate layer. However, similar dicing tapes for identical semiconductor processing and using similar radiation curable acrylic PSAs [13] (See page 1, paragraph [0008], page 28, paragraphs [0591]-[0092], and page 29, paragraphs [0597]-[0598], teaching dicing tapes for semiconductors and disclosing a 2EHA/HEA acrylic reacted with MOI and then polyisocyanate and the same photopolymerization initiator as in JP2020061423; note this adhesive also likely reads on Claims 1-5) wherein an intermediate layer [14] may be utilized in some embodiments to suppress deformation of the tape from the semiconductor (See Figs. 2-3, page 3, paragraphs [0040]-[0042], and page 10, paragraph [0205]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize an intermediate layer in JP2020061423. Doing so would have predictably suppressed undesirable deformation of the tape while on the semiconductor.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Park et al., Preparation of UV-curable PSAs by grafting isocyanate-terminated photoreactive monomers and the effect of the functionality of grafted monomers on the debonding properties on Si wafer, RSC Adv. 2023, 13, pgs 11874-11882 (2023), teaching a similar active ray radiation curable acrylic adhesive for wafer tapes that would appear to meet the structure of Claims 1-5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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