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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 recites “a camera which images the ground surface of the wafer and which moves together with the energy supply unit”. Paragraph 35 of the specification describes the camera and the energy supply unit attached to the same casing 43 and figure 4 shows this; however, there is no disclosure that the camera and the energy supply unit move together. Therefore this is new matter.
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.
Claim 7 is 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.
Claim 7 recites “the wafer”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this is a new element or if the wafer refers to the workpiece. Clarification is required.
Claim Rejections - 35 USC § 102
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 1-6 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nomaru (US 2021/0129264).
Regarding claim 1, Nomaru discloses a processing system (Figure 1) of a workpiece (Figure 2, 11) comprising:
a grinding unit (Figure 1, 34) that includes a grinding wheel (42a) and a spindle (38) that rotatably supports the grinding wheel (Figure 1), and grinds the workpiece (paragraph 41);
an energy supply unit (Figure 2, 76, this is adjacent 66, which is shown in figure 1) that supplies energy (A) to a ground surface (11b) of the workpiece ground by the grinding unit (paragraph 48) and melts (paragraph 98 describes the material undergoing a phase transition, i.e. melting) the ground surface to repair at least part of damage caused due to the grinding (Intended use, paragraph 64 describes the laser having a wavelength that is absorbed into the workpiece, which repairs damage via melting the material as described in paragraph 98); and
a conveying unit (Figure 1, 16) that conveys the workpiece from a position disposed below the grinding unit after the workpiece is ground to a position disposed below the energy supply unit (Figure 1), wherein the workpiece is disposed below no more than one of the grinding unit and the energy supply unit at any given time (Annotated figure 1 shows this), such that the energy supply unit and the grinding unit are separated by a distance (Annotated figure 1, doubleheaded arrow shows the distance) within a plane parallel to a surface of the workpiece (Figure 1) which prevents the energy supplying unit from supplying the energy to the ground surface of the workpiece until the conveying unit conveys the workpiece from the position below the grinding unit to the position below the energy supply unit (Intended use, Figure 1 shows the workpiece cannot simultaneously be positioned under the grinding unit and the energy supply unit).
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Regarding claim 2, Nomaru discloses wherein
the energy supply unit is a laser beam irradiation unit (Figure 3, 76) that includes a laser oscillator (92) that emits a laser beam (A) and a condenser lens (98) that condenses the laser beam, and executes irradiation with the laser beam (Figure 3).
Regarding claim 3, Nomaru discloses wherein
the laser beam irradiation unit executes irradiation with the laser beam with a wavelength having absorbability with respect to the workpiece (paragraph 64).
Regarding claim 4, Nomaru discloses wherein
a wavelength of the laser beam is a wavelength in a range of 500 to 1000 nm (paragraph 65 describes 532nm wavelength).
Regarding claim 5, Nomaru discloses wherein
a material of the workpiece is a material that makes liquid phase growth (paragraph 65 describes silicon).
Regarding claim 6, Nomaru discloses wherein
the conveying unit is a turntable (Figure 1, 16) that rotatably supports a holding table (Figure 1, 18) that holds the workpiece (paragraph 35), and
the holding table that holds the workpiece is moved from the grinding unit to the energy supply unit by rotation of the turntable (Figure 1 shows the turntable rotates the holding table and the workpiece from the grinding unit 34 to the energy supply unit 76, which is adjacent 66 in figure 1).
Regarding claim 8, Nomaru discloses further comprising: a controller (84) configured to control the conveying unit, such that the controller causes the conveying unit to move the workpiece from the position below the grinding unit to the position below the energy supply unit (paragraph 62 describes the control unit controlling operating of each processing component including the measuring unit 78 which measures the workpiece after grinding and the control unit uses that information to control the system. Paragraph 103 describes the controller 84 determining that a step in the process is completed and moving the workpiece to the next step).
Regarding claim 9, Nomaru discloses wherein the laser beam irradiation unit further includes a resonant scanner (paragraph 118 describes using a Galvano scanner as part of the laser beam applying unit 76) with a swing mirror (Figure 3, 96) which reciprocates an irradiation position of the laser beam (Figure 3), such that the laser beam irradiation unit is configured to irradiate the ground surface of the workpiece with the laser beam in an elongated range from a center of the workpiece to an outer peripheral edge of the workpiece (Figure 6 shows the laser beam A is in an elongated range from a center of the workpiece to an outer peripheral edge of the workpiece).
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.
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nomaru (US 2021/0129264) in view of Sekiya (US 2018/0099377).
Regarding claim 7, Nomaru discloses all the essential features of the invention as claimed and described above, and further discloses a measuring unit 78.
Nomura is silent on further comprising a camera which images the ground surface of the wafer and which moves together with the energy supply unit.
Sekiya teaches further comprising a camera (paragraph 32 describes camera 110) which images the ground surface of the wafer (See 112 above, for purposes of examination this is assumed to refer to the workpiece. Figure 3, surface of workpiece 11) and which moves together with the energy supply unit (Figure 3 shows camera 110 and energy supply unit laser diodes 94 are all within the inspection unit 50, so that they move together when inspection unit 50 moves).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Nomura’s invention to include further comprising a camera which images the ground surface of the wafer and which moves together with the energy supply unit in order to provide images of the workpiece as suggested and taught by Sekiya in paragraph 32.
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 Katheryn Malatek whose telephone number is (571)272-5689. The examiner can normally be reached Monday - Thursday, 9 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Devon Kramer can be reached at (571) 272-7118. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERYN A MALATEK/ Primary Examiner, Art Unit 3741