Prosecution Insights
Last updated: April 19, 2026
Application No. 18/186,323

GRINDING METHOD OF WAFER

Non-Final OA §103§112
Filed
Mar 20, 2023
Examiner
SHUM, KENT N
Art Unit
3723
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Disco Corporation
OA Round
1 (Non-Final)
27%
Grant Probability
At Risk
1-2
OA Rounds
3y 4m
To Grant
65%
With Interview

Examiner Intelligence

Grants only 27% of cases
27%
Career Allow Rate
26 granted / 95 resolved
-42.6% vs TC avg
Strong +38% interview lift
Without
With
+38.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
67 currently pending
Career history
162
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
42.9%
+2.9% vs TC avg
§102
18.1%
-21.9% vs TC avg
§112
31.7%
-8.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 95 resolved cases

Office Action

§103 §112
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/Restriction Applicant’s election of Species 1 (claims 1-2) is acknowledged. Election was made without traverse in the reply filed on 12/19/2023. Claims 1-3 are pending. Claim 3 is withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Priority Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55. Claim Objections Claims 1-2 are objected to because of the following informalities: “any one of the multiple grinding stones” (claim 1, lines 8-9) should be changed to --any one of multiple grinding stones--; “consideration” (claim 1, line 44) should be changed to --consideration,--; “of the wafer” (claim 2, line 1) should be deleted for clarity. Appropriate correction is required. Claim Rejections – 35 U.S.C. § 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 1-2 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. Claim 1 recites the limitation “a width along the second direction of each of the grinding stones” (lines 31-32). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, the phrase “the second direction of each of the grinding stones” lacks antecedent basis and is ambiguous; the previous use of the phrase “second direction” referred to a direction perpendicular to “the first direction” (lines 24-25), which was not in relation to any dimension or direction of the grinding stones. Further, to the extent the intended meaning refers to a width of the grinding stones, this is unclear because it is unclear which dimension (e.g., x, y, or z axis) of the grinding stones is being referenced. Applicant should note that the grinding stones are in a state of rotation at this step of the method, where the position of each grinding stone is constantly changing. For examination purposes, this limitation will be interpreted as best understood. Claim 2 is rejected on the basis it incorporates this limitation of claim 1. Claim Rejections – 35 U.S.C. § 103 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 C.F.R. § 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 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. Kim in view of Che and Shibata Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20120322231 A1 (“Kim”) in view of US 20200164486 A1 (“Che”) and US 20180102410 A1 (“Shibata”). Kim pertains to a wafer grinding apparatus and method (Abstr.; Figs. 1-6). Che pertains to a wafer grinding apparatus and method (Abstr.; Figs. 1-14). Shibata pertains to a wafer grinding apparatus and method (Abstr.; Figs. 6-11). These references are in the same field of endeavor. Regarding claim 1, Kim discloses a grinding method of a wafer with multiple devices formed on a side of a front surface thereof, for forming a recessed portion of a predetermined depth by grinding the wafer on a side of a back surface thereof (Figs. 1-6, 7B; ¶¶ 0032-0037, method of grinding a wafer 11 having devices 15 on front surface 11a, back surface 11b to be ground), comprising: a holding step of holding the wafer with the back surface kept exposed (Figs. 4-6, 7B; ¶ 0037, wafer 11 is held on chuck table 36 with back surface 11b facing upwards), a contacting step of bringing any one of the multiple grinding stones, the grinding stones being fixed at intervals in an annular pattern on an arrangement surface of a wheel base of a grinding wheel, and a center of the back surface of the wafer into contact with each other while both the grinding wheel and the wafer are being rotated (Figs. 4-6; ¶¶ 0035-0037, grinding wheel 22 with grinding stones 24 in an annular pattern arranged on wheel base of grinding wheel 22 is brought into contact with wafer back surface 11b, including center point P1, while both the grinding wheel 22 and wafer 11 (via chuck table 36) are both rotated), and a grinding step of, after the contacting step, grinding the wafer on the side of the back surface thereof by, with both the grinding wheel and the wafer kept rotating, bringing the arrangement surface of the wheel base and the front surface of the wafer closer to each other by a first movement distance along a first direction, and also bringing an axis of rotation of the grinding wheel and a center of the wafer closer to each other by a second movement distance along a second direction perpendicular to the first direction (Figs. 5-6, 7B; ¶ 0041, the inclined circumferential wall 50 is created by a simultaneous downward (“first direction”) and lateral (“second direction”) movement of the grinding wheel 22 relative to wafer 11 with them both rotating), wherein the first movement distance is a distance obtained by...the predetermined depth...(Fig. 7B; ¶ 0041, the vertical movement distance (“first movement distance”) is based on a predetermined depth from back surface 11b), the second movement distance is a distance optionally set to be shorter than a width along the second direction of each of the grinding stones (Fig. 7B; ¶ 0041, the lateral movement distance (“second movement distance”) is in the second direction towards the center of the wafer 11; Examiner notes that this step is optional; see § 112(b) rejection), in the grinding step, the grinding wheel and the wafer are moved relative to each other at a first relative speed along the first direction, and the first relative speed is an optionally set constant speed (Fig. 7B; ¶¶ 0038, 0041, grinding wheel 22 moves vertically towards wafer 11 at a vertical movement feed speed (“first relative speed”); Examiner notes that the “constant speed” limitation is optional), and, in the grinding step, the grinding wheel and the wafer are moved relative to each other at a second relative speed along the second direction, and the second relative speed is a constant or variable speed set, taking the predetermined depth,... the second movement distance, and the first relative speed into consideration[,] such that the relative movement of the grinding wheel and the wafer along the first direction and the relative movement of the grinding wheel and the wafer along the second direction are concurrently initiated and are concurrently finished (Fig. 7B; ¶¶ 0038, 0041, as evidenced by the inclined circumferential wall 50, the grinding wheel 22 moves vertically and laterally concurrently (including concurrently initiated and concurrently finished), moving at constant vertical and lateral feed speeds, to create the intended inclined circumferential wall 50 to the intended wafer depth; Examiner notes that if this were not the case, the wall could not be inclined, but rather stepped or curved (see, e.g., JP 2011054808A (“Suzuki”) (citations to translation filed herewith) Figs. 4-6, 7A-B, 8; ¶¶ 0037-0044, inclined circumferential surface 86 is created by a simultaneous downward and inwardly radial movement (directions 53 and 57) of the grinding wheel 18 relative to wafer 11 to a predetermined depth, using a predetermined constant feed speed)). Kim does not explicitly disclose: the first movement distance is a distance obtained by adding the predetermined depth and an expected wear thickness of the grinding stones when the wafer is ground to the predetermined depth, and, in the grinding step, the grinding wheel and the wafer are moved relative to each other at a second relative speed along the second direction, and the second relative speed is a constant or variable speed set, taking the predetermined depth, the expected wear thickness, the second movement distance, and the first relative speed into consideration[,] such that the relative movement of the grinding wheel and the wafer along the first direction and the relative movement of the grinding wheel and the wafer along the second direction are concurrently initiated and are concurrently finished. However, the Kim/Che/Shibata combination makes obvious this claim. Che discloses: the first movement distance is a distance obtained by adding the predetermined depth and an expected wear thickness of the grinding stones when the wafer is ground to the predetermined depth (Fig. 11; ¶¶ 0099-0107, the expected wear thickness of the polishing pad 110 is accounted for in determining the total polishing depth of the wafer (“first movement distance”)), and, in the grinding step, the grinding wheel and the wafer are moved relative to each other at a second relative speed along the second direction, and the second relative speed is a constant or variable speed set, taking the predetermined depth, the expected wear thickness, the second movement distance, and the first relative speed into consideration[,] such that the relative movement of the grinding wheel and the wafer along the first direction and the relative movement of the grinding wheel and the wafer along the second direction are concurrently initiated and are concurrently finished (Fig. 11; ¶¶ 0099-0107, the expected wear thickness of the polishing pad 110 is accounted for in determining the total polishing depth of the wafer (“first movement distance”)). 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 Che with Kim by modifying the grinding apparatus to take into consideration the expected grindstone wear thickness when determining the first movement distance and the second relative speed, as recited. This would have been obvious to a person of ordinary skill in the art because accounting for expected grindstone wear thickness would provide a more accurate grinding endpoint in the vertical direction (“first movement distance”), and the inclusion of expected grindstone wear thickness in the calculation of the second relative speed would allow for a more accurate lateral grinding endpoint (“second movement distance”) (Che ¶¶ 0101, “Specifically, the polishing control unit 600 uses the thickness of the polishing pad 110 as a control index, and controls parameters of the polishing process such as the pressing force of the carrier head 200 for pressing the substrate W to the polishing pad 110, the rotation of the carrier head 200 and polishing time by the carrier head 200. In other words, when the thickness of the polishing pad is changed, the wear rate of the substrate is changed. Also, the initial thickness of the polishing pad is known by measuring before installing onto the polishing table. Thus, as the polishing process proceeds, the changed amount of the polishing pad 110 is measured and thus the thickness of the polishing pad 110 is obtained in real time by subtracting the changed amount of the polishing pad 110 from the initial thickness in every polishing process. Therefore it is more desirable based on the thickness of the polishing pad to control the polishing parameters such as the pressing force of the carrier, the rotational speed of the carrier head, and conditioning time so as to accurately polish the substrate to the targeted thickness, whereby the change of the wear rate of the substrate W depending on the thickness change of the polishing pad 110 may be compensated.”). To the extent the Kim/Che combination does not disclose the limitation “in the grinding step, the grinding wheel and the wafer are moved relative to each other at a second relative speed along the second direction, and the second relative speed is a constant or variable speed set, taking the predetermined depth, the expected wear thickness, the second movement distance, and the first relative speed into consideration[,] such that the relative movement of the grinding wheel and the wafer along the first direction and the relative movement of the grinding wheel and the wafer along the second direction are concurrently initiated and are concurrently finished”, 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 Shibata with the Kim/Che combination to arrive at this limitation. Shibata discloses grinding a multi-angled circumferential wall 20 (20a/b/c), where the grinding depth (vertical distance) is predetermined and the angles θ1/θ2/θ3 of the wall 20 (20a/b/c) are predetermined (Shibata Figs. 7-12; ¶¶ 0037-0045). This limitation would have been obvious because the determination of the lateral feed speed (“second relative speed”) is a basic matter of trigonometry and feed rate calculation, and must take into account the vertical feed speed (“first relative speed”), the predetermined depth (plus the expected wear thickness per Che), and a lateral movement distance (“second movement distance”) in order to achieve the desired/predetermined angles (θ1/θ2/θ3) and/or desired lateral distances. Although Kim is silent on how to determine lateral feed speed, this silence and Kim’s disclosure of the resulting wafer grind geometry (Figs. 9-12) suggest that figuring out how to achieve this determination is within the ability of a person of ordinary skill in the art. Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the ‘593 patent is entirely silent on how to transmit user locations and maps from a server to a user’s mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this”); MPEP § 2141.03(I). Kim in view of Che, Shibata, and Xu Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20120322231 A1 (“Kim”) in view of US 20200164486 A1 (“Che”), US 20180102410 A1 (“Shibata”), and US 20210402551 A1 (“Xu”). Kim pertains to a wafer grinding apparatus and method (Abstr.; Figs. 1-6). Che pertains to a wafer grinding apparatus and method (Abstr.; Figs. 1-14). Shibata pertains to a wafer grinding apparatus and method (Abstr.; Figs. 6-11). Xu pertains to a wafer grinding apparatus and method (Abstr.; Fig. 1A). These references are in the same field of endeavor. Regarding claim 2, the Kim/Che/Shibata combination makes obvious the grinding method of claim 1 as applied above. Kim further discloses: wherein...the second relative speed is a speed obtained by dividing the second movement distance with a time obtained by dividing the first movement distance with the first relative speed (Fig. 7B; ¶¶ 0041-0042, the desired angle θ is obtained by using a second relative speed, which is based on a lateral distance (“second movement distance”) divided by a time based on the vertical movement distance (“first movement distance”) divided by the first relative speed, as explained in claim 1 regarding the obvious use of trigonometry and feed rate calculations to obtain feed speeds based on desired grind angles and/or distances). Kim, Che, and Shibata do not explicitly disclose wherein the expected wear thickness is known before the grinding step. However, the Kim/Che/Shibata/Xu combination makes obvious this claim. Xu further discloses: wherein the expected wear thickness is known before the grinding step (Figs. 5-6; ¶¶ 0022, 0065, 0074, 0077-0081, a known expected pad wear thickness is used to calculate a modified thickness value, which is used to determine the polishing endpoint). 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 Xu with the Kim/Che/Shibata combination by modifying the grinding apparatus to use an expected grindstone wear thickness that is known prior to performing grinding step. This would have been obvious to a person of ordinary skill in the art because, for example, when grinding multiple wafers having the same construction (e.g., same material and thickness) under the same operating conditions (e.g., same temperature, pressure, grinding stone) to have the same profile, it can be assumed that the grindstone wear for each processed wafer would be the same. Thus, in order to improve processing time, such as by removing measuring steps (either during grinding or before/after grinding of a wafer) of the grindstone wear thickness or the resulting wafer thickness, a known expected grindstone wear thickness could be used instead. Status of Claims Claims 1-3 are pending. Claim 3 is withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 1-2 are rejected. Conclusion The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. US 20070243796 A1 (“Torii”) discloses a wafer polishing apparatus that adjusts the polishing endpoint based on wear thickness (Abstr.; Figs. 7-10; ¶¶ 0072-0078); US 20230211457 A1 (“Lee”) discloses a wafer processing apparatus that includes a compensation system accounting for wear thickness of a lower plate (Abstr.; Fig. 1); US 20080242195 A1 (“Heinrich”) discloses a wafer polishing apparatus that adjusts the sensor height based on pad thickness (Fig. 2c; ¶¶ 0041-0042). 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866)217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800)786-9199 (IN USA OR CANADA) or (571)272-1000. /KENT N SHUM/Examiner, Art Unit 3723 /MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
Read full office action

Prosecution Timeline

Mar 20, 2023
Application Filed
Jan 11, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
27%
Grant Probability
65%
With Interview (+38.0%)
3y 4m
Median Time to Grant
Low
PTA Risk
Based on 95 resolved cases by this examiner. Grant probability derived from career allow rate.

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