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 .
Request for Continued Examination
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant’s submission filed on 12/22/2025 has been entered.
Claim Rejections – 35 U.S.C. § 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.
Suehiro in view of Nemoto and Seddon
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over JP 2012222123 A (“Suehiro”) (citations are to the translation filed 03/07/2024) in view of US 20080268752 A1 (“Nemoto”) and US 20180040469 A1 (“Seddon”).
Suehiro pertains to an apparatus and method for grinding semiconductor wafers (¶ 0006). Nemoto pertains to an apparatus and method for grinding semiconductor wafers (Abstr.; Fig. 4). Seddon pertains to an apparatus and method for grinding semiconductor wafers (Abstr.; Figs. 3a-h). These references are in the same field of endeavor.
Regarding claim 1, Suehiro discloses a grinding method of grinding a first surface side of a wafer having an oxide film on the first surface by use of a grinding unit having a grinding wheel mounted therein (Fig. 1, grinding unit 11, grinding wheel 2, first (top) side of wafer 3; ¶ 0033, oxide film on first side), the grinding wheel having a plurality of grindstones disposed in an annular pattern (Figs. 1-3, grindstones 22; ¶ 0015), the grinding method comprising:
a first grinding step (Fig. 10, step S13 (steps S11-S18 of Fig. 10 refer back to Fig. 7; ¶ 0051; ¶ 0039)) of putting the grinding wheel into grinding feeding (¶ 0039, “After it is confirmed that the wafer 3 has reached the air-cut start position (step S12), the lowering speed in the Z-axis direction is changed to a processing speed (first speed) of, for example, 1 μm/sec or less (step S13).”) while rotating the grinding wheel (¶ 0039, “The number of revolutions of the grindstones 2 in the grinder unit 11 is, for example, 4000rpm.”),
rotating a chuck table holding under suction a second surface side located on a side opposite to the first surface (Fig. 3, wafer 3 is fixed to chuck table 4 via suction; ¶ 0021) at a first rotating speed (¶ 0039, “At this time, the rotational speed (first rotational speed) of the chucking table unit 41 is, for example, about 300rpm”),
thereby causing lower surfaces of the grindstones to break through the oxide film (¶ 0033, oxide film on first side of wafer; ¶ 0039, this limitation is disclosed when grinding step S15 is applied to a wafer with an oxide film, which is disclosed here; Examiner also notes that there is no disclosure in Applicant’s specification that would suggest that an identical tool setup and method would not result in this limitation being satisfied; MPEP § 2144.01),
then scraping off the oxide film by side surfaces of the grindstones (¶ 0039, this limitation is disclosed as it is met as a result of the grindstones being continuously lowered, while rotating, against the oxide film; Examiner also notes that there is no disclosure in Applicant’s specification that would suggest that an identical tool setup and method would not result in this limitation being satisfied; MPEP § 2144.01),
and forming a step in a circumferential direction of the wafer on the first surface side, wherein the step is formed between a plurality of saw marks (¶ 0044, “When the position of the grinder unit 11 in the Z-axis direction reaches the processing end position (step S16) and the wafer 3 reaches a predetermined height, the lowering of the grinder unit 11 in the Z-axis direction is stopped at that timing, and the grinder unit 11 is immediately raised at a rapid speed (second speed) of, for example, 10 μm/sec or more (step S17)”; this limitation is disclosed due to the result of the grinding wheel being continuously lowered onto the wafer surface, and then rapidly raised in step S17 (see next step limitation) without an opportunity for grinding at a constant depth; ¶ 0045, “in the spark-out grinding and the escape, the grinding wheel 2 is prevented from being held in contact with the processed surface of the semiconductor wafer 3”; ¶ 0024, the formed “step” will necessarily be between two saw marks 31 as there is a plurality of saw marks on the wafer after this first grinding step (see Fig. 1); Examiner also notes that there is no disclosure in Applicant’s specification that would suggest that an identical tool setup and method would not result in this limitation being satisfied; MPEP § 2144.01);
a raising step of raising the grinding unit to space the grindstones from the wafer, after the first grinding step (Fig. 10, step S17; ¶ 0044, “the grinder unit 11 is immediately raised at a rapid speed”);
and a second grinding step of putting the grinding unit into grinding feeding to grind the wafer while rotating the grinding wheel (Fig. 10, step S23; ¶ 0055, “the lowering speed in the Z-axis direction is changed to a processing speed (third speed) of, for example, 1 μm/sec or less (step S23)....The number of revolutions of the grindstones 2 in the grinder unit 11 is, for example, 5000rpm”; Examiner notes that the grinding unit of step S23 is disclosed as being performed on a second grinding unit (after transferring the wafer “from the chucking table unit 41 to a finish chucking table unit” (¶ 0052)), and not on the first grinding unit of step S16, where the only disclosed difference between the grinding units is the coarseness of the grindstones (¶¶ 0052-0053); even so, this limitation does not require the second grinding step to be performed on the same grinding unit that performed the first grinding step),
in a state in which the chuck table holding under suction (¶ 0052, chuck table 4 holds wafer 3 under suction) the second surface is rotated at a second rotating speed...after the raising step (¶ 0055, “At this time, the rotational speed (third rotational speed) of the chucking table unit 41 is, for example, about 300rpm.”; Examiner notes that Suehiro discloses slower speeds for rotating the chuck table, including a rotation speed of “one third” of 300 rpm, or about 100 rpm),
wherein the side surfaces of the grindstones contact the step during at least a portion of the second grinding step (¶ 0055, “the lowering speed in the Z-axis direction is changed to a processing speed (third speed) of, for example, 1 μm/sec or less (step S23). At this time, the rotational speed (third rotational speed) of the chucking table unit 41 is, for example, about 300rpm. The number of revolutions of the grindstones 2 in the grinder unit 11 is, for example, 5000rpm.”; this limitation is disclosed due to the result of the grinding wheel being continuously lowered, while rotating, onto the wafer surface (which is also rotating) that has a step, to perform a grinding operation. The side surfaces of the grindstones will necessarily contact the step during the grinding operation before the bottom surfaces of the grindstones contact the step. That is, because there is a gap directly in front of the “step”, the side surfaces will contact the protruding feature first before the bottom surfaces of the grindstones will contact the protruding feature).
Suehiro does not explicitly disclose:
the chuck table holding under suction the second surface is rotated at a second rotating speed higher than the first rotating speed, after the raising step,
and wherein during the first grinding step, the chuck table is rotated at the first rotating speed from a time prior to contact between the grindstones and the oxide film until a time in which the raising step is performed,
and wherein the grindstones used during the first grinding step are the same as the grindstones used during the second grinding step.
However, the Suehiro/Nemoto/Seddon combination makes obvious this claim.
Nemoto discloses:
the chuck table holding under suction the second surface is rotated at a second rotating speed higher than the first rotating speed, after the raising step (¶ 0035, Nemoto discloses a constant chuck table rotational speed prior to grinding contact thru the raising step, which can be between 10 to 300 rpm, “The rotational speed of the wafer 1, or the chuck table 20 is usually set in the range of about 10 to 300 rpm.”; ¶ 0048),
and wherein during the first grinding step, the chuck table is rotated at the first rotating speed from a time prior to contact between the grindstones and the oxide film until a time in which the raising step is performed (¶ 0035, Nemoto discloses a constant chuck table rotational speed prior to grinding contact thru the raising step, which can be between 10 to 300 rpm, “The rotational speed of the wafer 1, or the chuck table 20 is usually set in the range of about 10 to 300 rpm.”; ¶ 0048).
Seddon discloses:
and wherein the grindstones used during the first grinding step are the same as the grindstones used during the second grinding step (Figs. 3a-d; ¶¶ 0022-0023, a first grinding step is followed by a raising step, which is followed by a second grinding step, both steps using the same grinding wheel 132 and grindstones 133).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Nemoto with Suehiro by modifying the rotation speed of the chuck table in the first grinding step (from a time prior to grinding contact thru the raising step) to a constant lower speed, such as between 10 rpm to 60 rpm. Suehiro discloses at least two embodiments: one where the rotation speed of the chuck table in the first grinding step starts at 300 rpm and then prior to the raising step, the speed is reduced to about 100 rpm, and then increased back to 300 rpm for the second grinding step (Suehiro ¶¶ 0039, 0055); and a second prior art embodiment where the rotation speed of the chuck table is constant at 300 rpm (Suehiro ¶¶ 0028-0031). Nemoto discloses a constant rotation speed of the chuck table prior to grinding contact thru the raising step, where the constant rotation speed can be within the range of 10 to 300 rpm (Nemoto ¶¶ 0035, 0048). In view of the teachings of the prior art, it would have been obvious for a person of ordinary skill to use a constant chuck table rotation speed from grinding contact thru the raising step (for the first grinding step), where the constant chuck table rotation speed is slower than the chuck table rotation speed during the second grinding step (thereby meeting the limitation “the chuck table holding under suction the second surface is rotated at a second rotating speed higher than the first rotating speed, after the raising step”). This modification would have been obvious to one of ordinary skill in the art because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see MPEP § 2144.05(II). Here, a lower chuck table rotation speed is a known result-effective variable because it achieves the result of reducing grindstone wear (Suehiro ¶ 0043, “it is apparent that the number of rotations of the chuck table unit 41 may be reduced to one third at a position higher than 5 μm because an effect of making the amount of consumption of the grindstone constant can be obtained”; see also US 6358117 B1 (“Kato”) Table 1, 5:15–6:9, lower chuck table rotation speed results in fewer and smoother or no remaining grinding striations) as well as compensation for grinding load (see JP 2019018326 A (“Aoki”) ( ¶¶ 0029-0030, the rotational speed of the chuck table can be increased or decreased to compensate for the detected grinding load”). Thus, a person of ordinary skill in the art would have recognized the effect of this variable (of lower chuck table rotational speed) and found the claimed range through routine experimentation (see Suehiro Figs. 6, 8, 9, experimentally determining grinding and grindstone wear results using different grinding techniques, including the modification of chuck rotational speed, grinding wheel rotational speed, and vertical feed rate). Further, using a constant lower chuck table rotation speed for the first grinding step is merely practicing the prior art, as evidenced by Nemoto and the prior art embodiment of Suehiro.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Seddon with the Suehiro/Nemoto combination by using the same grinding wheel (and its grindstones) for both the first and second grinding steps. This would have been obvious to try in order to obtain a better/faster grinding result, including using additional processes during the raising step (between the first and second grinding steps) to improve the result (Seddon Figs. 3a-d; ¶¶ 0022-0023, a wafer surface cleaning process to remove contaminants). Examiner notes that the specification suggests that there is no criticality associated with using the same grinding wheel and grindstones for both grinding steps as it describes an alternative method of using two or more different grinding wheels for the first and second grinding steps: “The grinding apparatus 2 of the above embodiment is of what is generally called manual type, but may be of an automatic grinding system having a rough grinding unit and a finish grinding unit. Besides, an automatic grinding and polishing system having a rough grinding unit, a finish grinding unit and a polishing unit may also be adopted.” (Spec. ¶ 0049). Accordingly, the use of the same grinding wheel and grindstones for the first and second grinding steps is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Regarding claim 2, the Suehiro/Nemoto/Seddon combination makes obvious the grinding method of claim 1 as applied above. Nemoto further discloses wherein the first rotating speed of the chuck table in the first grinding step is 10 rpm to 60 rpm (¶ 0035, “The rotational speed of the wafer 1, or the chuck table 20 is usually set in the range of about 10 to 300 rpm.”).
The obviousness rationale for claim 2 is the same as for claim 1.
Regarding claim 3, the Suehiro/Nemoto/Seddon combination makes obvious the grinding method of claim 1 as applied above. Suehiro further discloses wherein the second rotating speed of the chuck table in the second grinding step is 100 rpm to 500 rpm (¶ 0055, “At this time, the rotational speed (third rotational speed) of the chucking table unit 41 is, for example, about 300rpm.”).
Regarding claim 4, the Suehiro/Nemoto/Seddon combination makes obvious the grinding method of claim 1, as applied above. Suehiro, Nemoto, and Seddon do not explicitly disclose wherein the step is of a depth of between 5 μm and 20 μm. However, the Suehiro/Nemoto/Seddon combination makes obvious this claim.
For the same reasons discussed for claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Nemoto with Suehiro by modifying the rotation speed of the chuck table in the first grinding step to a slower speed, such as 12 rpm (Nemoto ¶ 0035, “The rotational speed of the wafer 1, or the chuck table 20 is usually set in the range of about 10 to 300 rpm.”). Based on this slow 12 rpm chuck table rotational speed, and using Suehiro’s disclosed feed rate of 1 μm/sec or less (Suehiro ¶ 0039, “while the lowering speed in the Z-axis direction is kept at the processing speed [1 μm/sec]”), that means that in 5 seconds, the wafer would have rotated exactly 360°, and the total Z-axis travel of the grindstone would be 5μm. Thus, when the following Suehiro step of rapidly raising the grinding wheel is done (Suehiro Fig. 10, step S17; ¶ 0044, “the grinder unit 11 is immediately raised at a rapid speed...for example, 10 μm/sec or more”), a spiral step is created that has a depth of 5μm, which satisfies the limitation: wherein the step is of a depth of between 5 μm and 20 μm. Further, Applicant has not disclosed that the step depth between 5 μm and 20 μm is critical (see Spec. ¶ 0036). Without evidence of criticality or unexpected results, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976); MPEP § 2144.05(I).
Regarding claim 5, the Suehiro/Nemoto/Seddon combination makes obvious the grinding method of claim 1 as applied above. Suehiro further discloses wherein the step comprises a single spiral step (¶ 0044, “When the position of the grinder unit 11 in the Z-axis direction reaches the processing end position (step S16) and the wafer 3 reaches a predetermined height, the lowering of the grinder unit 11 in the Z-axis direction is stopped at that timing, and the grinder unit 11 is immediately raised at a rapid speed...for example, 10 μm/sec or more”, due to the configuration of the grinding wheel and the chuck table, the step created in claim 1 is a spiral step (see Fig. 1); Examiner also notes that there is no disclosure in Applicant’s specification that would suggest that an identical tool setup and method would not result in this limitation being satisfied; MPEP § 2144.01).
Claim 6 is rejected on the same basis as claim 4, except as depending from claim 5 (where the “step” is defined as a “single spiral step”).
Regarding claim 7, the Suehiro/Nemoto/Seddon combination makes obvious the grinding method of claim 1 as applied above. Nemoto further discloses wherein the chuck table used in the second grinding step is the same chuck table used in the first grinding step (Fig. 2, ¶¶ 0029, 0037, 0039).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Suehiro/Nemoto/Seddon combination with the teachings of Nemoto to use a single chuck table that can be moved to different apparatus (e.g., the different grinding wheels of Suehiro for the two steps) instead of using a second chuck table. This would have been obvious because doing so may save cost by only requiring one chuck table per wafer, and may reduce processing time because this would eliminate the step of transferring the wafer from a first chuck table to a second chuck table, where that step is replaced by simply moving the single chuck table to a different apparatus (see also US 20180122700 A1 (“Yamashita”) ¶ 0048, “For example, while the wafer 10 is sequentially transferred to the chuck tables of the grinding apparatus, the cutting apparatus, and the laser processing apparatus in performing the back grinding step, the cut groove forming step, and the dividing step and then held on the chuck tables to perform the respective steps in the above preferred embodiment, these apparatuses may be integrated into a composite processing apparatus having a single chuck table for holding the wafer 10, in which the single chuck table may be moved to each dedicated apparatus in performing each step. In this case, it is unnecessary to transfer the wafer 10 between the dedicated apparatuses and change the chuck tables for holding the wafer 10.”).
Regarding claim 8, the limitations are the same as for claim 1, except the following:
deletion of the limitation, “wherein the step is formed between a plurality of saw marks” (see claim 1, lines 10-11);
deletion of the limitation, “wherein the side surfaces of the grindstones contact the step during at least a portion of the second” (see claim 1, lines 17-18);
addition of the limitation, “wherein during the first grinding step, the step in the wafer is formed by rotating the chuck table by more than one revolution, but less than two revolutions, after the lower surfaces of the grindstones have made contact with the oxide film” (claim 8, lines 10-13);
addition of the limitation, “wherein the grinding wheel used in the second grinding step is the same grinding wheel used in the first grinding step” (claim 8, lines 20-21).
Nemoto further discloses:
wherein during the first grinding step, the step in the wafer is formed by rotating the chuck table by more than one revolution, but less than two revolutions, after the lower surfaces of the grindstones have made contact with the oxide film (¶ 0035, “The rotational speed of the wafer 1, or the chuck table 20 is usually set in the range of about 10 to 300 rpm.” (see discussion below)).
Seddon further discloses:
wherein the grinding wheel used in the second grinding step is the same grinding wheel used in the first grinding step (Figs. 3a-d; ¶¶ 0022-0023, a first grinding step is followed by a raising step, which is followed by a second grinding step, both steps using the same grinding wheel 132 and grindstones 133).
The obviousness rationale for claim 8 for the Suehiro/Nemoto/Seddon combination is the same as for claim 1 with the following addition:
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Suehiro/Nemoto/Seddon combination with the teachings of Nemoto by using a slower rotation speed for the chuck table in the first grinding step, such as 10 rpm, which is within the range disclosed by Nemoto (Nemoto ¶ 0035, “The rotational speed of the wafer 1, or the chuck table 20 is usually set in the range of about 10 to 300 rpm.”). Based on this slow 10 rpm chuck table rotational speed, and using Suehiro’s disclosed feed rate of 1 μm/sec or less (Suehiro ¶ 0039, “while the lowering speed in the Z-axis direction is kept at the processing speed [1 μm/sec]”), that means that in 6 seconds, the chuck table and wafer would have rotated exactly 360°, and the total Z-axis travel of the grindstone would be 6 μm. Based on Suehiro’s 1.0 μm example of oxide film thickness (Suehiro ¶ 0034), a person of ordinary skill in the art would realize and cause the apparatus to perform the first grinding step for 7 seconds in order to remove all of the 1.0 μm oxide film, where the extra second is required to remove the remaining oxide film from the first 1 second of the grinding step (where the grindstones traveled from a depth of 0 μm to 1.0 μm from the initial wafer surface). This satisfies the limitation “wherein during the first grinding step, the step in the wafer is formed by rotating the chuck table by more than one revolution, but less than two revolutions, after the lower surfaces of the grindstones have made contact with the oxide film”.
This modification would have been obvious to one of ordinary skill in the art because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see MPEP § 2144.05(II). Here, a lower chuck table rotation speed and performing the first grinding step for a certain duration (e.g., 7 seconds, resulting in a rotation of the chuck table and wafer between one and two revolutions) are known result-effective variables because they achieve the result of reducing grindstone wear (Suehiro ¶ 0043, “it is apparent that the number of rotations of the chuck table unit 41 may be reduced to one third at a position higher than 5 μm because an effect of making the amount of consumption of the grindstone constant can be obtained”; see also US 6358117 B1 (“Kato”) Table 1, 5:15–6:9, lower chuck table rotation speed results in fewer and smoother or no remaining grinding striations), as well as maximizing production speed (e.g., after the harder oxide film is entirely removed, the softer underlying silicon material can be removed at a faster rate by rotating the chuck table and wafer faster (via immediately transitioning to the second grinding step)). Thus, a person of ordinary skill in the art would have recognized the effect of these variables and found the claimed range through routine experimentation (see Suehiro Figs. 6, 8, 9, experimentally determining grinding and grindstone wear results using different grinding techniques, including the modification of chuck rotational speed, grinding wheel rotational speed, and vertical feed rate). Further, Applicant has not disclosed that this limitation (i.e., only rotating between one and two revolutions) is critical (see Spec. ¶¶ 0033-0034, “To completely remove the oxide film 11 d, the chuck table 10 has to be rotated one revolution or more”; there is no mention that the chuck table and wafer must be rotated less than two revolutions). Without evidence of criticality or unexpected results, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976); MPEP § 2144.05(I).
Claim 9 is rejected on the same basis as claim 2, except as depending from claim 8.
Claim 10 is rejected on the same basis as claim 3, except as depending from claim 9.
Claim 11 is rejected on the same basis as claim 4, except as depending from claim 8.
Claim 12 is rejected on the same basis as claim 5, except as depending from claim 8.
Claim 13 is rejected on the same basis as claim 6, except as depending from claim 12.
Regarding claim 14, the limitations are the same as for claim 1, except the following:
deletion of the limitation “wherein the step is formed between a plurality of saw marks” (see claim 1, lines 10-11);
addition of the limitation “wherein: during an initial phase of the second griding step, the side surfaces of the grindstones are in contact with the step and the lower surfaces of the grindstones are separated from the wafer; during a subsequent phase of the second grinding step, where the subsequent phase follows the initial phase, the lower surfaces of the grindstones are in contact with the wafer” (claim 14, lines 17-23, modified from claim 1, lines 17-18).
Suehiro further discloses:
wherein: during an initial phase of the second griding step, the side surfaces of the grindstones are in contact with the step and the lower surfaces of the grindstones are separated from the wafer; during a subsequent phase of the second grinding step, where the subsequent phase follows the initial phase, the lower surfaces of the grindstones are in contact with the wafer (¶ 0055, “the lowering speed in the Z-axis direction is changed to a processing speed (third speed) of, for example, 1 μm/sec or less (step S23). At this time, the rotational speed (third rotational speed) of the chucking table unit 41 is, for example, about 300rpm. The number of revolutions of the grindstones 2 in the grinder unit 11 is, for example, 5000rpm.”; this limitation is disclosed due to the result of the grinding wheel being continuously lowered, while rotating, onto the wafer surface (which is also rotating) that has a step, to perform a grinding operation. The side surfaces of the grindstones will necessarily contact the step during the grinding operation before the bottom surfaces of the grindstones contact the step. That is, because there is a gap directly in front of the “step”, the side surfaces will contact the protruding feature first before the bottom surfaces of the grindstones will contact the protruding feature).
The obviousness rationale for claim 14 for the Suehiro/Nemoto/Seddon combination is the same as for claim 1.
Claim 15 is rejected on the same basis as claim 2, except as depending from claim 14.
Claim 16 is rejected on the same basis as claim 3, except as depending from claim 15.
Claim 17 is rejected on the same basis as claim 4, except as depending from claim 14.
Claim 18 is rejected on the same basis as claim 5, except as depending from claim 14.
Claim 19 is rejected on the same basis as claim 6, except as depending from claim 18.
Claim 20 is rejected on the same basis as claim 7, except as depending from claim 14.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-20 are pending. Claims 1-20 are rejected.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s arguments regarding amended claim 8 (Reply at 13-14) is moot in view of the new rejection above due to the amended limitations.
Applicant’s additional arguments regarding independent claims 1, 8, and 14 (Reply at 8-13) are not persuasive for several reasons. Regarding the formation of a step, Examiner disagrees with Applicant’s assertions as this limitation is achieved by the Suehiro method as discussed above, specifically as a result of steps S16 and S17. Regarding the use of a higher rotation speed for the second grinding step, Applicant’s arguments fail because nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); MPEP § 2145(IV). Further, the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the explicit content of the cited references. The question is not whether a combination was obvious to the inventor or Applicant but whether the combination was obvious to a person of ordinary skill in the art before the effective filing date of the application. Applicant’s argument fails because Applicant confounds the question of obviousness and neglects the KSR standard for a person of ordinary skill, which is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here, the cited prior art (especially Nemoto) discusses the general conditions and parameters (and their effects) for grinding a silicon wafer, including the use of various chuck rotational speeds, grinding wheel rotational speed, and vertical feed rates. There is no requirement under KSR for the prior art to explicitly state an exact technique for obtaining a result if a person of ordinary skill could ascertain how the result could be accomplished based on the prior art in combination with the person’s logic, judgment, and common sense. Id. at 418 (“the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“an analysis of obviousness...also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”).
Applicant does not present any further arguments concerning the remaining claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723