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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 16 and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 16 and 17 each depend from claim 15, a cancelled claim. It is noted that claim 15 has been incorporated into claim 1. To further prosecution, the examiner is going to interpret the intent of the applicant was to have claims 16 and 17 each depend from claim 1, and will be examined on the merits as such.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
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.
Claims 1, 5, 8-10, 13, 14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-072496 A with a machine translation (submitted 29 November 2025) (hereinafter “Odajima”) being used as the English language equivalent translation, in view of United States Patent Application Publication No. US 2004/0053042 (hereinafter “Eguchi”), and further in view of United States Patent Application Publication No. US 2005/0028931 (hereinafter “Fukaya”).Regarding claim 1 Odajima teaches a substrate holder comprising an elastic body layer (film body comprised of an elastic material) 3, 13 and an adhesive layer (coating layer) 2, 12 applied thereon (coating layer formed as to cover a surface on a wafer retaining side of the film body), where the adhesive layer (coating layer) 2, 12 comprises a liquid silicone rubber (polymeric binder) (abstract, and paragraphs [0017] and [0036] – [0037]). Odajima teaches the presence of an air gap 8 formed between the substrate 20 and the adhesive holding layer (coating layer) 2, 12 aides to release the adhesiveness of the layer 2, 12 from the substrate 20 (abstract). Odajima does not explicitly teach the adhesive layer (coating layer) 2, 12 comprises nonmetallic particles dispersed in the liquid silicone rubber (polymeric binder). Eguchi teaches a wiping film comprising a flexible film backing and a wiping layer (abstract). Eguchi teaches the film backing (film body) 1 is flexible (comprises an elastic material), and the wiping layer (coating layer) 4 is formed so as to cover a surface of a side of the film backing (film body) 1 (abstract, paragraphs [0014] and [0017], and Figure 1). Eguchi also teaches the materials used have sufficient strength to burnishing processes (paragraphs [0019] and [0024]). Eguchi teaches the wiping layer (coating layer) 4 has a preferred thickness ranging from 2-20 µm (paragraph [0046]), and the plastic (nonmetallic) particles 2 has a preferred average particle size of 0.001-100 µm (paragraph [0026]), which corresponds to an embodiment where the thickness of the coating layer is smaller than an average particle size of the nonmetallic particles. Eguchi teaches the wiping layer (coating layer) 4 contains a binder resin (polymeric binder) 3 and plastic (nonmetallic) particles 2 dispersed in the binder resin (polymeric binder) 3 (Figure 1 and paragraph [0017]). Eguchi teaches the wiping layer 4 includes an irregular structure useful for taking in fine foreign matters and particles, and includes plastic particles dispersed in the polymeric binder 3 to prevent scratches on the treatment surface (paragraph [0024]). Eguchi teaches the binder of the wiping layer comprises various synthetic rubbers (paragraph [0033]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the adhesive holding layer (coating layer) 2, 12 of Odajima with the wiping layer 4 including the plastic (nonmetallic) particles 2 of Eguchi to permit the taking in of fine foreign matters and particles to clean the treated surface, while also preventing scratches or damage on the treated surface. In addition, Odajima teaches the substrate holder is for holding a silicon wafer during processing (paragraph [0007]), and the elastic body layer (film body comprised of an elastic material) 3 is formed on a support 5 (paragraph [0009]). Odajima does not explicitly teach the elastic body layer (film body) 3 has a circular portion having its surface on a wafer retaining side coated with the coating layer, and a cylindrical portion having the shape of a vertical wall and formed integrally with the circular portion on a device attachment side of a peripheral edge of the circular portion and an annular portion formed integrally with the cylindrical portion to extend continuously inward. Fukaya teaches a substrate holding apparatus for holding a substrate such as a semiconductor wafer (abstract). Fukaya teaches the semiconductor device is planarized by a CMP process (paragraph [0006]). Fukaya teaches the apparatus includes an elastic membrane (elastic film) (abstract). Fukaya teaches the elastic membrane (elastic film comprising a film body of an elastic material) 7 includes a coating layer applied to a surface of the elastic membrane which is brought into contact with the substrate (formed so as to cover a surface on the wafer retaining side of the film body) (paragraphs [0011] and [0065]). Fukaya teaches the coating applied to the membrane adds a non-stick feature to the membrane which permits easy detachment of the substrate from the elastic membrane (paragraph [0019]). Fukaya teaches a film of the coating comprises a fluororesin (polymeric binder) (paragraph [0022]). Fukaya illustrates the elastic membrane 7 has a circular portion having its surface on the wafer retaining side coated with the coating layer 7c, and a cylindrical portion have a shape of a vertical wall and formed integrally with the circular portion on a device attachment side of a peripheral edge of the circular portion and an annular portion formed integrally with the cylindrical portion to extend continuously inward (Figure 2, Figure 3A, Annotated Figure 3B, shown below, and Figures 4A-5B; and paragraph [0083]). Fukaya teaches the elastic membrane 7 is held in place or mounted on a chucking plate 6 by the annular portion of the membrane which is sandwiched between the chucking plate 6 and an annular edge ring 4 (paragraph [0062] and Figure 2).
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Odajima and Fukaya are analogous inventions in the field of semiconductor wafer processes. It would have been obvious to one skilled in the art at the time of the invention to modify the elastic body layer 3 of Odajima with the circular shape, cylindrical portion, and annular portion of the elastic membrane of Fukaya to: enable the elastic body layer of Odajima to be useful in processing semiconductor wafers having a circular shape; and/or hold the elastic film in place against an adjacent plate/support.Regarding claim 5 In addition, Eguchi teaches the plastic (nonmetallic) particles are comprised of phenolic resin, epoxy resin, high-density polyethylene resin, polyester resin, polyolefin, polystyrene, polyolefin, polycarbonate, etc. (paragraph [0027]), which corresponds to a thermoplastic resin or a thermosetting resin.Regarding claim 8 In addition, Eguchi teaches the plastic (nonmetallic) particles have an average particle size of 0.1 µm to 10 µm (paragraph [0026]), which falls within the claimed range.Regarding claim 9 In addition, Eguchi teaches the plastic (nonmetallic) particles in the wiping layer (coating layer) 4 are present in an amount of 70-350 parts by weight (mass) per 100 part by weight (mass) of the binder (paragraph [0039]), which falls within the claimed range.Regarding claim 10 In addition, Odajima teaches the adhesion holding layer (coating layer) 2, 12 may include a filler for the purpose of preventing static charge (antistatic agent) (paragraph [0017]).Regarding claim 13 In addition, Eguchi teaches the wiping layer (coating layer) 4 has a thickness of 2 to 20 µm (paragraph [0046]), which falls within the claimed range.Regarding claim 14 In addition, Eguchi teaches the wiping layer (coating layer) 4 has a center line average surface roughness (arithmetic average roughness) (Ra) of preferably 0.01 to 5 µm (paragraph [0047]), which encompasses the claimed range.Regarding claim 16 In addition, Fukaya illustrates an outer peripheral surface of the cylindrical portion being continuous with the surface on the wafer retaining side of the circular portion (Annotated Figure 3B, shown above). Fukaya does not explicitly teach the coating layer is also formed on the outer peripheral surface of the cylindrical portion. However, it would have been obvious to a person having ordinary skill in the art at the time of the invention to additionally apply the coating layer disclosed by Fukaya on the outer peripheral surface of the cylindrical portion of the elastic membrane 7 to permit said elastic membrane 7 to more easily separate from the retainer ring 3 upon completion of the wafer planarization process.Regarding claim 17 In addition, Fukaya teaches the coating 7c is applied on a circular portion of the elastic membrane 7 away from an outermost circumferential edge 7d of the membrane (paragraph [0067], Annotated Figure 3B, shown above, and Figures 4A-6), which corresponds to the coating layer is not formed on a surface on the device attachment side of the circular portion and an inner peripheral surface of the cylindrical portion.Regarding claim 18 In addition, Odajima teaches an embodiment where the elastic layer (film body) is a foamed silicone rubber (paragraph [0050]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Odajima, Eguchi and Fukaya as applied to claim 1 above, and further in view of an article titled “One-component RTV rubbers” (hereinafter “Shin-Etsu”).Regarding claim 4 The limitations for claim 1 have been set forth above. As previously noted, Odajima teaches the adhesive layer (coating layer) 2, 12 comprises a liquid silicone rubber (polymeric binder comprised of liquid silicone rubber) (abstract, and paragraphs [0017] and [0036] – [0037]). In addition, Odajima teaches the materials for the adhesion holding layer, which includes the liquid silicone rubber, must be compatible with applications requiring heat resistance (paragraphs [0017] and [0036] – [0037]). Odajima does not explicitly teach the liquid silicone rubber is a polycondensation liquid silicone rubber, and a reaction mechanism of the liquid silicone rubber is an alcohol type or an acetone type. Shin-Etsu teaches one-component RTV silicone rubber compounds suitable for a wide range of applications (page 1, first paragraph). Shin-Etsu teaches silicone rubber compounds suitable for an ultra heat-resistance application (KE-3417 or KE-3418) includes a silicone rubber that is a polycondensation silicone rubber, and a reaction mechanism of the silicone rubber is an acetone type (page 4). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the mechanism of forming the silicone rubber of Odajima with the polycondensation silicone rubber, where the reaction mechanism of the silicone rubber is an acetone type of Shin-Etsu to yield a silicone rubber exhibiting high heat-resistance, as desired by Odajima.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Odajima, Eguchi and Fukaya as applied to claim 5 above, and further in view of an article titled “Processibility and Mechanical Properties of Micronized Polytetrafluoroethylene Reinforced Silicone Rubber Composites” by Eun-Soo Park (submitted on 10 March 2022) (hereinafter “Park”).Regarding claims 6 and 7 The limitations for claim 5 have been set forth above. In addition, Eguchi does not explicitly teach the plastic (nonmetallic) particles are comprised of: a fluororesin; or polytetrafluoroethylene (PTFE). Park teaches micronized polytetrafluoroethylene (PTFE) powders (nonmetallic particles comprised of a fluororesin or PTFE) which are compounded with (dispersed in) a silicone rubber, and the mechanical properties of the composites were evaluated (abstract). Park teaches silicone rubber has relatively low tear strength and abrasion resistance, where the use of PTFE reinforcing additives effectively improve the tear strength of these silicone elastomers (page 372, left hand column). Park teaches PTFE is distinguished by its complete resistance to attack by virtually all chemicals and by its slippery surface (page 372, right hand column). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the silicone rubber composition from the combination of Odajima and Eguchi with the PTFE powder of Park to improve tear strength, abrasion resistance, chemical resistance and/or a non-stick property or slipperiness of the coating layer.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Odajima, Eguchi and Fukaya as applied to claim 10 above, and further in view of United States Patent Application Publication No. US 2017/0053821 (hereinafter “Sugo”).Regarding claims 11 and 12 The limitations for claim 10 have been set forth above. As previously noted above with regards to the rejection of claim 10, Odajima teaches the adhesion holding layer (coating layer) 2 may include a filler for the purpose of preventing static charge (antistatic agent) (paragraph [0017]). Odajima does not explicitly teach: the antistatic agent is an ionic liquid; and/or the adhesion holding layer (coating layer) 2 contains 0.2 parts by mass or more and 20 parts by mass or less of the antistatic agent per 100 parts by mass of the silicone rubber (polymeric binder). Sugo teaches a bonding arrangement (coating layer) including first, second, and third layers, which are suited for temporary bonding of a wafer to a support for wafer processing (abstract). Sugo teaches the second and/or third layers contains an antistatic agent (Id). Sugo teaches the use of the antistatic agent suppresses generation of containment particles when the wafer is separated from the support (paragraph [0015]). Sugo teaches the antistatic agent is incorporated in a sufficient amount to exert an antistatic effect, preferably 0.01 to 10 wt% based on the entire arrangement (paragraph [0099]), which corresponds to about 0.01 to 11 parts by mass of the antistatic agent per 100 parts by mass of the polymeric binder, which overlaps the claimed range. Sugo also teaches the antistatic agent includes well-known anionic surfactants and cationic surfactants (ionic liquid) (paragraph [0090]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the antistatic agent of Odajima with the anionic surfactants and/or cationic surfactants (ionic liquid) of Sugo to suppresses generation of containment particles when a substrate is separated from a support after its planarization processing.
Response to Arguments
Applicant’s arguments, see page 5, filed 25 February 2026, with respect to the rejection of claim 4 under 35 USC §112(b) have been fully considered and are persuasive. The rejection of claim 4 under 35 USC §112(b) has been withdrawn.
Applicant's arguments filed 25 February 2026 have been fully considered but they are not persuasive.
The applicant’s review of Odajima and Fukaya is noted. Applicant’s statements with regards to what each reference teaches and does not teach relative to the other references and the instant application appear to be directed to a piecemeal analysis of the prior art references. It has been established one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In other words, the applicant’s remarks with regards to “Odajima’s structure is fundamentally different from the claimed invention” and “Fukaya’s geometry is not taught or suggested by Odajima” fails to address the rejection itself, which relies on a combination of the prior art references to meet the claims.
The applicant also argued Odajima’s structure is not a membrane or disc-shaped film, and its release mechanism is fundamentally incompatible with Fukaya’s top ring geometry, nor is there any evidence that such a modification would preserve the functional advantages of Odajima’s release mechanism. This argument provides a position without providing any evidence or persuasive reasoning to back up such a position. It is well-settled that unsupported arguments are not a substitute for objective evidence. In re Pearson, 181 USPQ 641 (CCPA 1974). It is the position of the examiner that the prior art references do not contain any evidence that: Odajima’s release mechanism is fundamentally incompatible with Fukaya’s top ring geometry; and the modification proposed in the rejection of record would not preserve the functional advantages of said release mechanism.
The applicant argued the Office action does not identify any teaching or suggestion in Odajima that would motivate or enable a person having ordinary skill in the art to incorporate the structural features added to claim 1, and combining Odajima’s air-gap release substrate holder with Fukaya’s geometry would not be a simple substitution or addition of features. The examiner respectfully disagrees and contends the use of Odajima’s elastic body layer to process wafers having different shapes, such as the circular shape taught by Fukaya is sufficient motivation for why a person having ordinary skill would make the modification proposed in the rejection of record. Moreover, changing the dimensions of Odajima’s elastic body layer would require nothing more than routine skill. The applicant’s argument that combining Odajima’s air-gap release substrate holder with Fukaya’s geometry would not be a simple substitution or addition of features is not support by facts. It is again stated that unsupported arguments are not a substitute for objective evidence. It is additionally noted that Odajima fails to provide a structure for the ends or edges of the elastic body layer, so to stipulate that Odajima’s elastic body would not be capable of being formed in the same configuration taught by Fukaya does not appear to be supported by the references. Alternatively, it has been held that substituting a first equivalent component for another does not require an express suggestion to do so to render such a substitution obvious (See MPEP §2144.06(II)). It is the position of the examiner that the elastic body layer of Odajima and the elastic membrane of Fukaya are art recognized equivalent elastic films used as a substrate holding layer in a wafer processing apparatus (Odajima – abstract, and paragraphs [0001], [0002], etc., and Fukaya – abstract). Therefore, the rejection of record is considered to be appropriate.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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