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 .
Response to Amendment
The amendment and/or arguments submitted on 04/22/2026 is/are being considered by the examiner.
Claims 1-8 are pending:
Claims 3-4, 7-8 are withdrawn
Claims 1-2, 5-6 are examined on the merits
Election/Restrictions
Applicant's election without traverse of Group I and Species A (Fig1/7-15) in the reply filed on 04/22/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claim 3-4, 7-8 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group/Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/22/2026.
Claim 7-8
Applicant failed to identify the claims that correspond to Species A in the remarks dated 04/22/2026. Interview with B. Joe Kim on 05/28/2026 resulted in applicant identifying claims 1-6 to correspond to elected Species A.
Claim 3
Claim 3 is directed towards Species B: V-shaped blade
Claim 4
Claim 4 is directed towards Species C: laser cutter
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 03/20/2023, 09/08/2023, 11/03/2025 is/are being considered by the examiner.
IDS dated 09/08/2023
NPL1 (EP Search Report dated 09/04/2023) not considered due to not being provided in the filewrapper.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1, 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 1 of U.S. Patent No. 12,076,879, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other. Please see the comparison table below, the underlining indicates recitations that do not patentably correspond to the language of the other document.
Instant Application 18/186,339
US Patent 12,076,879
Claim 1
Claim 1
A processing method for a workpiece, comprising:
a first processing groove forming step of forming, by a first processing unit, a first processing groove that has a depth not reaching a face side of the workpiece, in a state in which the face side is held and a reverse side of the workpiece that is positioned on an opposite side of the face side is exposed;
an imaging step of, after the first processing groove forming step,
imaging the first processing groove by a first imaging unit, in a state in which the workpiece is held by a holding table having an area formed with a transparent material, and
imaging, by a second imaging unit provided on an opposite side of the first imaging unit with respect to the holding table, a predetermined line that is provided on the face side and that is formed at a position corresponding to that of the first processing groove in a thickness direction of the workpiece;
a detecting step of, after the imaging step, detecting whether or not a position of a first center line of the first processing groove imaged by the first imaging unit and a position of a second center line of the predetermined line imaged by the second imaging unit are aligned in a predetermined plane; and
a correcting step of, when the position of the first center line and the position of the second center line are detected as not being aligned in the detecting step, correcting a processing position in such a manner as to make the positions of the two center lines aligned.
A method of processing a semiconductor wafer having devices formed on a face side of the wafer, comprising:
a holding step of holding the face side of the wafer on a holding table having a region made of a transparent material while a reverse side of the wafer is being exposed; and
a processed groove forming step of forming a processed groove in the wafer by cutting the wafer held on the holding table with a cutting blade,
wherein the processed groove forming step includes:
a first processed groove forming step of forming a first processed groove in the wafer, the first processed groove having a predetermined depth short of the face side, with a first cutting blade having a first thickness,
a first image capturing step of capturing an image of the first processed groove on the reverse side of the wafer by a first image capturing unit, the first capturing unit being disposed on a first side of the holding table,
a second processed groove forming step of positioning a second cutting blade that has a second thickness at the first processed groove and forming a second processed groove in the wafer along the first processed groove, the second processed groove extending to the face side, thereby dividing the wafer,
a second image capturing step of capturing an image of the second processed groove on the face side of the wafer through the holding table by a second image capturing unit, the second image capturing unit being disposed on a second, opposite side of the holding table, and
a detecting step of detecting whether or not a position of a first central line of the first processed groove whose image has been captured in the first image capturing step and a position of a second central line of the second processed groove whose image has been captured in the second image capturing step are in conformity with each other in a predetermined plane, and
if the position of the first central line and the position of the second central line are not in conformity with each other in the predetermined plane in the detecting step, then the processed groove forming step further has a correcting step of correcting a position of a center of the cutting blade in order to bring the position of the first central line and the position of the second central line into conformity with each other.
Claim 2
Claim 1
The processing method for a workpiece according to claim 1, further comprising:
before the imaging step, a second processing groove forming step of forming, by a second processing unit, a second processing groove that is positioned on an opposite side of the first processing groove in the thickness direction of the workpiece and that has a depth not reaching the first processing groove, in a state in which the reverse side is held on the holding table and the face side is exposed, wherein
the predetermined line is an opening of the second processing groove formed in the face side,
in the detecting step, whether or not the position of the first center line of the first processing groove imaged by the first imaging unit and the position of the second center line of the second processing groove imaged by the second imaging unit are aligned in the predetermined plane is detected, and,
in the correcting step, a processing position of the second processing unit is corrected.
A method of processing a semiconductor wafer having devices formed on a face side of the wafer, comprising:
a holding step of holding the face side of the wafer on a holding table having a region made of a transparent material while a reverse side of the wafer is being exposed; and
a processed groove forming step of forming a processed groove in the wafer by cutting the wafer held on the holding table with a cutting blade,
wherein the processed groove forming step includes:
a first processed groove forming step of forming a first processed groove in the wafer, the first processed groove having a predetermined depth short of the face side, with a first cutting blade having a first thickness,
a first image capturing step of capturing an image of the first processed groove on the reverse side of the wafer by a first image capturing unit, the first capturing unit being disposed on a first side of the holding table,
a second processed groove forming step of positioning a second cutting blade that has a second thickness at the first processed groove and forming a second processed groove in the wafer along the first processed groove, the second processed groove extending to the face side, thereby dividing the wafer,
a second image capturing step of capturing an image of the second processed groove on the face side of the wafer through the holding table by a second image capturing unit, the second image capturing unit being disposed on a second, opposite side of the holding table, and
a detecting step of detecting whether or not a position of a first central line of the first processed groove whose image has been captured in the first image capturing step and a position of a second central line of the second processed groove whose image has been captured in the second image capturing step are in conformity with each other in a predetermined plane, and
if the position of the first central line and the position of the second central line are not in conformity with each other in the predetermined plane in the detecting step, then the processed groove forming step further has a correcting step of correcting a position of a center of the cutting blade in order to bring the position of the first central line and the position of the second central line into conformity with each other.
Claim Interpretation - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“first processing unit” as first recited in claim 1
Corresponding structure
Cutting unit 78a: blade with spindle, as informed by Para47 and Fig8/10
Or equivalents
“first imaging unit” as first recited in claim 1
Corresponding structure
camera 54, as informed by Para37/41 and Fig13a/b
Or equivalents
“second imaging unit” as first recited in claim 1
Corresponding structure
Camera 86a, as informed by Para48 and Fig13a/b
Or equivalents
“second processing unit” as first recited in claim 2
Corresponding structure
Cutting unit 78a: blade with spindle, as informed by Para47 and Fig8/10
Or equivalents
“third processing unit” as first recited in claim 5
Corresponding structure
Cutting unit 78b: blade with spindle, as informed by Para49 and Fig15
Or equivalents
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims are objected to because of the following informalities:
Claim 2, 5-6
Amend style to add semicolons at the end of each sub-paragraph in the same style as already applied to instant claim 1. Formatting sub-paragraphs using semicolons will improve clarity.
Appropriate correction is required.
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(s) 1-2, 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sekiya (JP 06-275583) in view of Masuda (US 2020/0335377).
Claim 1
Sekiya discloses:
“A processing method for a workpiece (wafer 1/11), comprising:
a first processing groove (groove 5) forming step of forming, by a first processing unit (blade 4), a first processing groove that has a depth not reaching a face side of the workpiece (best seen Fig2/4/5, groove 5 does not extend full thickness of wafer 1/11), in a state in which the face side is held and a reverse side of the workpiece that is positioned on an opposite side of the face side is exposed (best seen Fig1/2, chuck table 2 during cut of groove 5 by blade 4, side 1b is back – Para6);
…”
Sekiya uses (Para7-9) alignment holes 2a/b with “alignment unit 3” to control the alignment of the wafer in the arrangement.
Sekiya is silent to the imaging, detecting, and correcting steps as required.
Masuda teaches:
“… (all mapping is best seen Fig7A/B)
an imaging step of, after the first processing groove forming step,
imaging the first processing groove (processed groove 11d) by a first imaging unit (Para45, camera 48), in a state in which the workpiece (workpiece 11) is held by a holding table having an area formed with a transparent material (Para48, chuck table 26 includes transparent body 60 holds workpiece 11), and
imaging, by a second imaging unit (Para44, camera 46) provided on an opposite side of the first imaging unit with respect to the holding table (camera 46/48 are each provided on opposite sides of chuck table 26 body 60), a predetermined line that is provided on the face side (Para81, workpiece 11 top surface 11a has predetermined line B.1) and that is formed at a position corresponding to that of the first processing groove in a thickness direction of the workpiece (Para81, predetermined line B.1 is the desired location for groove 11d and thus corresponds to the actual groove line B.2; Fig7B image 122 corresponds to camera 46 directed at front surface 11a, image 124 corresponds to camera 48 directed towards back surface 11b);
a detecting step of, after the imaging step, detecting whether or not a position of a first center line of the first processing groove imaged by the first imaging unit and a position of a second center line of the predetermined line imaged by the second imaging unit are aligned in a predetermined plane (Para81, delta.B is detected based on lines B.1 and B.2 of images 122/124); and
a correcting step of, when the position of the first center line and the position of the second center line are detected as not being aligned in the detecting step, correcting a processing position in such a manner as to make the positions of the two center lines aligned (Para82, delta.B is corrected when not aligned by shifting position).”
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to look to the prior art to select a detailed alignment method for a wafer groove cutting arrangement for Sekiya, as Sekiya does not fully disclose the alignment system beyond the use of holes and a “alignment unit”, and therefore one of ordinary skill in the art would have to make a selection of a more detailed alignment method for a given wafer groove in order to actually practice the disclosure of Sekiya, and Masuda teaches a wafer groove imaging/detecting/correcting method that uses two cameras that produce images from which groove and intended groove lines are compared and then corrected if needed for a given groove, and Masuda teaches that such an alignment method is a known in the art, and the resulting arrangement of the simple substitution of one known in the art alignment method for another has the reasonable expectation of successfully providing the arrangement of Sekiya with a working and known in the art camera based-alignment method as taught by Masuda for each of the grooves of the arrangement of Sekiya.
Claim 2
The modified arrangement of Sekiya by the teachings of Masuda discloses:
“The processing method for a workpiece according to claim 1, further comprising:
before the imaging step, a second processing groove (Sekiya: groove 7) forming step of forming, by a second processing unit (Sekiya: blade 4’), a second processing groove that is positioned on an opposite side of the first processing groove in the thickness direction of the workpiece (Sekiya: best seen Fig4/5/10, grooves 5/7 are positioned on opposite sides of wafer 1/11) and that has a depth not reaching the first processing groove (Sekiya: best seen Fig4/5/10, groove 7 does not reach the thickness depth of groove 5), in a state in which the reverse side is held on the holding table and the face side is exposed (Sekiya: best seen Fig3/4, chuck table 2’ during cut of groove 7 by blade 4’), wherein
the predetermined line is an opening of the second processing groove formed in the face side (Sekiya: best seen Fig5, desired and actual dicing line 8 corresponds to location of grooves 5/7 with front face 1a),
in the detecting step, whether or not the position of the first center line of the first processing groove imaged by the first imaging unit and the position of the second center line of the second processing groove imaged by the second imaging unit are aligned in the predetermined plane is detected (limitation is within the scope of the modification as discussed in claim 1. Masuda: Fig7B, Para81, delta.B between first and second grooves 5/7 of Sekiya), and,
in the correcting step, a processing position of the second processing unit is corrected (limitation is within the scope of the modification as discussed in claim 1. Masuda: Para82, misalignment is corrected by shifting position).”
Claim 5
The modified arrangement of Sekiya by the teachings of Masuda discloses: “The processing method for a workpiece according to claim 2, further comprising: a dividing step of dividing the workpiece by a third processing unit (Sekiya: blade 6) in such a manner as to connect to each other the first processing groove and the second processing groove that are formed in corresponding positions in the thickness direction of the workpiece (Sekiya: best seen Fig3/5/10, blade 6 cuts wafer 1/11 via thickness arrangement of grooves 5/7 with front face 1a).”
Claim 6
The modified arrangement of Sekiya by the teachings of Masuda discloses:
“The processing method for a workpiece according to claim 1, wherein
the predetermined line is a projected dicing line set on the face side (Sekiya: best seen Fig5, desired and actual dicing line 8 corresponds to location of grooves 5/7 with front face 1a),
in the imaging step, the projected dicing line is imaged by the second imaging unit (limitation is within the scope of the modification as discussed in claim 1. Masuda: Fig7B, Para81, groove center line for each of first and second grooves 5/7 of Sekiya is imaged by cameras 46/48 of Masuda), and,
in the correcting step, a processing position of the first processing unit is corrected (limitation is within the scope of the modification as discussed in claim 1. Masuda: Para82, misalignment is corrected by shifting position).”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 11,393,709 to Masuda: US Patent version of Masuda above
US 11,222,822 or 2020/0227319: US Patent version of IDS reference
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN HUNTER JR whose telephone number is (571)272-5093. The examiner can normally be reached M-F, 9-18.
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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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/JOHN S HUNTER, JR/Examiner, Art Unit 3761
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