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(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 4 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.
Regarding claim 4, the claim recites “the first peel-off surface and the second peel-off surface of a combination of at least either the ingot and the ingot, the wafer and the wafer, or the ingot and the wafer are moved relatively to each other…” However, only a single ingot and wafer are recited in the claims, making it unclear how “the ingot and the ingot” or “the wafer and the wafer” may be moved relative to each other. For the purposes of this examination, this limitation will be read as defining that the first and second peel-off surfaces which are moved relatively to each other may be formed in a plurality of ingots or wafers which are formed by the claimed peel-off layer producing steps, which are then in contact with each other in the surface irregularity reducing step.
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.
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.
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(s) 1, 3, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamichi (JP H0974077, previously cited).
Regarding claim 1, Yamamichi discloses a method of reducing surface irregularities on a peel-off surface resulting from the peel-off surface being peeled off from a workpiece (note that the described peeling off is not a positively recited method step in this claim, and does not define over the structure of the workpieces described by Yamamichi), the method comprising: a holding step of holding a first workpiece on a first holder and exposing a first peel-off surface having first surface irregularities (surface of workpiece 1 facing opposite workpiece) and holding a second workpiece that is of a same material as the first workpiece on a second holder and exposing a second peel-off surface having second surface irregularities (fig 1; first and second semiconductor workpieces 1 on first and second holders 2 with facing surfaces exposed to each other; described in [0011]; the claimed surface irregularities are present on the surfaces and to be reduced by polishing); and a surface irregularity reducing step of moving the first holder and the second holder relatively to each other (indicated by arrows in fig 1) while the first peel-off surface and the second peel-off surface are being kept in contact with each other ([0011]; may be moved rotationally or linearly), thereby removing at least either of the first surface irregularities on the first workpiece or the second surface irregularities on the second workpiece ([0012]; the described polishing achieves flatness, and thus a reduction in irregularity on each surface).
Regarding claim 3, Yamamichi further teaches the surface irregularity reducing step includes a step of controlling a pressure under which the first workpiece and the second workpiece are pressed against each other (as broadly claimed, the relative movement of the holders to receive pressure from each other described [0010] constitutes pressure control).
Regarding claim 5, Yamamichi discloses a surface irregularity reducing apparatus comprising: a first holder (2) for holding a first workpiece (1) thereon; a second holder (2) for holding thereon a second workpiece (1) that is of a same material as the first workpiece held on the first holder ([0011], fig 1; both holders 2 holding workpieces 1; note that the desired workpiece material does not limit the structure of the claimed apparatus), in facing relation to the first workpiece (as shown in fig 1); and a moving mechanism for moving the first holder and the second holder relatively to each other, wherein the moving mechanism moves the first holder and the second holder relatively to each other while the first workpiece held on the first holder and the second workpiece held on the second holder are being kept in contact with each other (movement described in [0011]; mechanism can be linear or rotational drive), thereby removing surface irregularities of a contact surface of at least either the first workpiece or the second workpiece (as described [0012]), and wherein the moving mechanism moves the first holder and the second holder relative to each other to remove the surface irregularities without supplying grinding liquid between the first holder and the second holder (the moving mechanism, which is a rotational or linear drive as described [0011] only moves the holders and workpieces relative to each other and contains no structure capable of supplying grinding liquid).
Regarding claim 7, Yamamichi further discloses each of the first workpiece and the second workpiece is an ingot or wafer having a peel-off surface that has been peeled off from the ingot (surfaces facing each other in fig 1; note that the claimed previous manufacturing steps of the workpiece do not in any way limit the structure of the claimed apparatus; see MPEP 2115 “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”), and the moving mechanism moves peel-off surfaces of a combination of at least either an ingot and an ingot, a wafer and a wafer, or an ingot and a wafer relatively to each other while the peel-off surfaces are being kept in contact with each other (function described in [0011-0012]).
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) 2, 4, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamichi as applied to claim 1 above, and further in view of Donofrio (US 2020/0316724, previously cited).
Regarding claim 2, Yamamichi teaches all the elements of claim 1 as described above. Yamamichi does not teach after the surface irregularity reducing step, a grinding step of contacting the first or second peel-off surface with a grinding wheel. Donofrio teaches a surface irregularity reducing method in the field of semiconductor manufacturing, wherein after a surface irregularity reducing step of a workpiece (coarse grinding; fig 40), a grinding step of grinding the peel-off surface of the workpiece (fine grinding step 312) with a grinding wheel ([0282]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to grind the first or second peel-off surface of the first or second workpiece of Yamamichi with a grinding wheel, achieving the predictable result of further smoothing the surface as taught by Donofrio ([0282]).
Regarding claim 4, Yamamichi teaches all the elements of claim 1 as described above. Yamamichi further teaches the first and second workpieces are semiconductor wafers ([0011]) with the first and second peel-off surfaces (the rough faces) wherein the wafers are moved relatively to each other while in contact with each other in the surface irregularity reducing step ([0011]). Yamamichi is silent as to how the wafers are produced before the holding step. However, it is obvious to apply a known technique to a known method to yield predictable results (MPEP 2143 I. D.). Donofrio teaches a method of reducing surface irregularities on a wafer, wherein before the surface irregularity reducing step, a peel-off layer producing step of producing peel-off layers in an ingot (62) by applying a laser beam (61; fig 10A) having a wavelength transmittable through the ingot to the ingot while positioning a focused spot of the laser beam in the ingot at a depth from an end face of the ingot, the depth corresponding to a thickness of a wafer to be manufactured from the ingot (as described [0214] and shown in fig 10, the laser is focused at a depth from the surface to form line 63); and before the surface irregularity reducing method, a wafer manufacturing step of manufacturing the wafer by peeling off a portion of the ingot as the wafer from the peel-off layers as separation initiating points (fracturing described [0215], [0257]), wherein in a subsequent surface irregularity reducing step (coarse grinding; fig 40) first and second workpieces each of a first workpiece and a second workpiece is the ingot having a peel-off surface from which the wafer has been peeled off in the wafer manufacturing step or the wafer having a peel-off surface that has been peeled off from the ingot in the wafer manufacturing step, and, in the surface irregularity reducing step, the peel-off surfaces of a combination of at least either an ingot and an ingot, a wafer and a wafer, or an ingot and a wafer are ground (described [0282]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to, before the holding and surface irregularity reducing steps of Yamamichi, form the first and second peel-off layers in an ingot and wafer by focusing a spot of a laser through the ingot at a depth to form the wafer and peeling off the wafer from the ingot, as such a laser cutting and peeling method is known for achieving the predictable result of forming wafers from an ingot as taught by Donofrio.
Regarding claim 8, Yamamichi teaches all the elements of claim 1 as described above. Yamamichi further teaches the first peel-off surface of the first workpiece and second peel-off surface of the second workpiece are both semiconductor wafers ([0011]), and therefore formed of the same material. Yamamichi is silent as to how the wafers are produced before the holding step and therefore does not explicitly teach the first peel-off surface is peeled off from the second peel off surface. However, it is obvious to apply a known technique to a known method to yield predictable results (MPEP 2143 I. D.). Donofrio teaches a method of reducing surface irregularities on a wafer, wherein before the surface irregularity reducing step, a peel-off layer producing step of producing a first peel-off surface and a second peel-off surface, wherein the first peel-off surface of a first workpiece is peeled-off from a second peeled off surface of a second workpiece (peel-off process described in [0214]; fig 10 shows the separation at line 63, separation of these workpieces forms two workpieces with their respective surfaces peeled off from each other) wherein in a subsequent surface irregularity reducing step (coarse grinding; fig 40) the first and second peel-off surfaces of the first and second workpieces have their irregularities reduced ([0282]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to, before the holding and surface irregularity reducing steps of Yamamichi, form the first and second peel-off layers by peeling off the first peel-off surface from the second peel-off surface, as such a peeling method is known for achieving the predictable result of forming wafers from an ingot as taught by Donofrio.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamichi as applied to claim 5 above, and further in view of Chen (US 2019/0126433, previously cited).
Regarding claim 6, Yamamichi teaches all the elements of claim 5 as described above. Yamamichi further teaches the moving mechanism includes a first moving unit for moving the first holder and the second holder relatively to each other in a direction parallel to the contact surface (as indicated by double sided arrow in fig 1 and described [0011]), a second moving unit for moving the first holder and the second holder relatively toward and away from each other in a direction transverse to the contact surface (as indicated by arrow in fig 1 and described application of pressure in [0012]). Yamamichi does not teach a pressure sensor mounted on the first or second holder for measuring a pressure or adjusting a distance between the first holder and second holder for a measured value of pressure to fall within a desired range. Chen teaches an apparatus for reducing surface irregularities, wherein a pressure sensor (13) mounted on a workpiece holder (22; fig 7) for measuring a pressure produced when the workpiece is pressed against a grinding surface ([0044]), and, while the workpiece is being kept in contact with the grinding surface, a moving unit adjusts a distance between second holder (12) and the workpiece holder (22) in order for a measured value of the pressure from the pressure sensor to fall within a desired range (as described [0045]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a pressure sensor on the first or second holder of Yamamichi to measure the pressure produced when the first and second workpieces are pressed against each other, and to configure the second moving unit to adjust a distance between the first and second holders to maintain a measured value of the pressure within a desired range, as this improves consistency of machining, resulting in more accurate and efficient machining as taught by Chen ([0005], [0045]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamichi as applied to claim 1 above, and further in view of Sekiya (US 2009/0042488).
Regarding claim 9, Yamamichi teaches all the elements of claim 1 as described above. Yamamichi does not teach the surface irregularity reducing step is performed while supplying water between the first and second peel-off surfaces. Sekiya teaches a method of reducing surface irregularities including during the surface irregularity reducing step, supplying water to the machined surface ([0056]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to supply water between the first and second peel-off surfaces (these are the surfaces being machined) of Yamamichi while performing the surface irregularity reducing step, as this cools the surface and discharges debris generated during machining as taught by Sekiya ([0056]).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamichi as applied to claim 1 above, and further in view of Sakai (US 2021/0069859).
Regarding claim 10, Yamamichi teaches all the elements of claim 1 as described above. Yamamichi does not teach the surface irregularity reducing step is performed without supplying liquid between the first peel-off surface and the second peel-off surface (element 4 of Yamamichi is described as “abrasive material” or “polishing agent”, which is not explicitly described as a liquid, but its depiction in the shape of a droplet in fig 2 implies it may be liquidous). However, Sakai teaches that a step of removing surface irregularities may be performed in a wet or dry state ([0049]), indicating that a dry processing is a known alternative to wet processing and usable during the removal of surface irregularities. Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to perform the surface irregularity reducing step of Yamamichi without supplying liquid between the first peel-off surface and the second peel-off surface (either by supplying no abrasive, or a dry abrasive powder), a dry processing is a known alternative to wet processing when performing reduction of surface irregularities as taught by Sakai ([0049]).
Response to Arguments
Applicant's arguments filed 2 Jul 2026 have been fully considered but they are not persuasive. Applicant argues that claim 1 requires the first and second peel-off surfaces to be formed as a result of being peeled off from a workpiece. However, claim 1 does not positively recite a method step for forming the peel-off surfaces and does not recite any structure which differentiates the claimed workpieces from the workpieces of Yamamichi. As Yamamichi is performing polishing to flatten the wafer surfaces, the original surfaces are having their existing irregularities reduced by the machining. Applicant argues that Yamamichi performs the polishing after a film is formed on the wafer. However, the claims do not preclude additional processing steps occurring before the claimed reduction in surface irregularities. Note that claim 4 positively recites particular peel-off layer forming steps, which are rendered obvious by Donofrio.
Regarding claim 5, applicant argues that Yamamichi does not teach removing surface irregularities without supplying grinding liquid between the first holder and second holder. However, this limitation as a whole currently reads “the moving mechanism moves the first holder and the second holder relative to each other to remove the surface irregularities without supplying grinding liquid between the first holder and the second holder” (emphasis added). Thus, the claim, as currently stated, requires that the moving mechanism does not supply grinding liquid between the first holder and second holder. Yamamichi provides grinding material from an element completely separate from the moving mechanism, and thus still meets this limitation.
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 MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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