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 § 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.
Claim(s) 1-10 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2014/0154956 to Lee in view of USPN. 5,523,121 to Anthony.
Regarding Claims 1-10
Lee teaches a tool comprising a surface having at least one protrusion such as a “burl” and a diamond coating deposited on the surface (Lee , paragraphs [0053]-[0054], abstract, fig. 1-6). Lee teaches that the coating is either continuously covering or partially covering the protrusions and would necessarily be conformal over regions of the tool since the geometry of the protrusions is retained (Id., paragraph [0057]).
Lee does not appear to teach the thickness or grain size of the diamond coating. However, Anthony teaches a diamond coating for substrates comprising a diamond coating deposited uniformly between 5 and 500 micrometers, which overlaps the claimed range of between 200nm and 100 microns (Anthony, abstract, column 5, line 63- column 6, line 2). Anthony teaches that the average grain size is between 0.1 and 0.3 microns and that the grain size varies less than 10% from that average value (equally sized) , which for a given average grain size within said range such as 250 nanometers would result in at least 90% of the grains being between 225 and 275 nm (Id., column 4, lines 23-32). Anthony teaches that a diamond coating of this nature results in surprisingly superior performance due to the lacking of surface flaws (Id., column 5, lines 29-41). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the composite of Lee and to apply as the diamond coating, the coating of Anthony, motivated by the desire to form a conventional diamond coated product having superior performance and minimal surface flaws.
Regarding the temperature of the deposition process and intention to reduce or substantially minimize a temperature-induced thermal warping of the tool during the depositing process. This limitation is a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art. Furthermore, Anthony teaches a range including from about 500 degrees Celsius, which necessarily includes temperatures below 500 degrees Celsius, overlapping the claimed range (See MPEP 2144.05) (Id., column 6, lines 59-64).
Regarding Claim 2
Regarding the tool being a wafer handling tool including one or more of a wafer chuck, wafer holder, wafer stage, wafer tables, wafer substrate, die scanner, wafer table for CMP or wafer transporter, this limitation is an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Claims 21-23
Regarding the protrusion minimizing friction and surface abrasion of a silicon wafer when it is handled by the tool, enabling the wafer to move across the diamond coating, flatten out and settle over the tool, and having a size, spacing and composition that allows maintaining a substantially uniform pressure across a surface of a silicon wafer being handled by the tool, although the prior art does not disclose the usage characteristics or effects on a given silicon wafer, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention (diamond coated protrusion including substrate for handling of silicon wafers comprising the claimed thickness and grain size). Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Alternatively, these limitations are intended use limitations and are defined by the usage of the claimed product, including the characteristics and parameters of the process and materials, and not necessarily the structure of the product itself. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive. Applicant argues that Anthony’s temperature range is outside the claimed range and the claimed range provides a distinct technical advantage that is not taught by the prior art. Examiner respectfully disagrees. As set forth above Anthony teaches a range including from about 500 degrees Celsius, which necessarily includes temperatures below 500 degrees Celsius, overlapping the claimed range (See MPEP 2144.05) (Id., column 6, lines 59-64). Furthermore, Anthony and Lee both teach substrates for which thermal warping would not be expected to be significantly higher at a processing temperature of 500 or above vs slightly below 500 degrees Celsius, such as Molybdenum, Tungsten alloys and the like (Lee, paragraph [0052], Anthony, Column 5, lines 9-16).
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.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786