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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-4) in the reply filed on 10/30/2025 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, the limitation “the fusion step includes applying the laser beam to a boundary region including a boundary between the recess portion and the annular projection portion and peripheries of the boundary” is indefinite. 1) The definition of the term “peripheries of the boundary” is unclear. It is unclear whether the “peripheries of the boundary” is in the recess portion side or in the projection portion side. 2) The boundary region is not part of the recess portion, and the fusion step in claim 1 clearly states applying laser beam to the ground surface, which is the surface of the recess. Therefore claim 2 is contradict with claim 1, and the metes and bounds of the claim is unclear.
Regarding claims 3-4, the claims are rejected due to their dependency on an indefinite claim as shown above.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawai (US 2008/0076256).
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Regarding claim 1, Kawai teaches a processing method for a workpiece, comprising:
a holding step of holding the workpiece (semiconductor wafer 2) on a holding table (chuck table 31) (see fig.4);
a grinding step of grinding the workpiece (semiconductor wafer 2) that is held on the holding table (chuck table 31) at and around a center thereof by a grinding wheel (grinding wheel 324) (See para.[0034] “After the semiconductor wafer 2 is suction held on the chuck table 31, the grinding wheel 324 is rotated at, for example, 6,000 rpm in a direction indicated by an arrow 324 a and moved down to bring the grindstone 326 into contact with the rear surface 21 b of the substrate 21 of the semiconductor wafer 2 in such a manner that it passes over the center of rotation and the periphery of the rear surface 21 b while the chuck table 31 is rotated at, for example, 300 rpm in the direction indicated by the arrow 31 a.”), so that a recess portion (circular recess portion 25 b) is formed at and around the center of the workpiece and an annular projection portion (extra area 26) is formed surrounding the recess portion (circular recess portion 25 b) at and along an outer periphery of the workpiece (see fig.5); and
a fusion step of applying a laser beam to a surface of the workpiece, the surface having been ground in the grinding step, so that the ground surface is fused (see para.[0038] “next comes the step of forming via holes in the substrate 21 by applying a pulse laser beam to the rear surface 21 b of the substrate 21 of the semiconductor wafer 2.” Hence, the substate 21 will be fused during the process for forming holes thereon.).
Examiner’s note: The patentability of the subject matter in the claims 2-4 cannot be determined. Examiner cannot conduct proper search due to the limitation of claim 2 is contradict with the claim 1. Examiner suggests applicant to amend the claims to clearly define invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS Q LIU whose telephone number is (571)272-8241. The examiner can normally be reached Mon-Fri 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRIS Q LIU/ Primary Examiner, Art Unit 3761