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 Interpretation
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:
“conveyor” that conveys in claim 1.
“first placing member” that places in claim 3.
“second placing member” that places in claim 3
“brancher” that branches in claim 6.
“an adjustor” that adjusts in claim 8.
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.
The ”conveyor” is interpreted as a movable part with collets (See instant published paragraph [0046]), or an appropriate equivalent.
The “first placing member” is interpreted as a grip (See instant published paragraph 0046), or an appropriate equivalent.
The “second placing member” is interpreted as a stage (See instant published paragraph [0046]), or an appropriate equivalent.
The “brancher” is interpreted as a beam splitter (See instant published paragraphs [0101]-[0102]), or an appropriate equivalent.
The “adjustor” is interpreted as a valve (See instant published paragraph [0068]) or an appropriate equivalent.
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 13 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 13 is directed to a method, without claiming any method steps. The “use” of the device of claim 1 does not set fourth any steps involved in the process. See, MPEP 2173.05(q).
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(s) 1, 2, 4, 5, 7, 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MITSUICHI et al. (US 2020/0381387).
With respect to claim 1, MITSUICHI et al. discloses an alignment apparatus (Abstract) for aligning and bonding substrates (Paragraph [0062]). The apparatus comprises an irradiator, 323 and 343 (Paragraphs [0059]-[0064]) configured to irradiate a surface of a first and second component with ultraviolet rays and a conveyor, 332 and 331, (equivalent to the interpreted conveyor) configured to convey a first component (Paragraphs [0057]-[0060]; Figures 3, 5, 6 and 7).
The courts have generally held that an "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
In the instant case, “wherein the irradiator irradiates the first component held by the conveyor with the ultraviolet ray” is a manner of operating the device, and does not impart patentability to the claims. The device of MITSUICHI et al. is capable of operating as claimed (See figures 3, 5, 6 and 7; Paragraphs [0057]-[0060]).
Moreover, “the conveyor conveys the first component irradiated with the ultraviolet rays to a surface of a second component, and brings the surface of the first component and the surface of the second component into contact with each other to bond the first component and the second component” is a manner of operating the claimed device and does not impart patentability to the claims. The device of MITSUICHI et al. is capable of performing the claimed functions (See figures 3, 5, 6 and 7; Paragraphs [0077]-[0083]).
With respect to claim 2, The courts have generally held that an "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
The requirement of “wherein the irradiator irradiates a surface of one of a plurality of first components with the ultraviolet rays, the conveyor bonds the one of the first components and the second component, after bonding the one of the first components and the second component, the irradiator irradiates a surface of another first component of the plurality of first components with the ultraviolet rays, and the conveyor bonds the another first component and the second component” is a manner of operating the claimed apparatus and does not impart patentability to the claims. As noted above (See paragraphs [0077]-[0083] and Figures 3, 5, 6 and 7), the apparatus of MITSUICHI et al. is capable of irradiating a first and second component with UV rays, conveying the first component and bonding the irradiated surfaces together. By repeating the process of only conveying a new component to the previously bonded components. The apparatus has the capability to perform the claimed operations of the device.
With respect to claims 4 and 5, MITSUICHI et al. discloses that the irradiator comprises a first irradiator, 323, that irradiates the surface of the first component, 230, with the UV rays and a second irradiator, 343, that irradiates the surface of the second component, 210, with the UV rays (Paragraphs [0060], [0062], [0067], [0066]; Figure 5).
With respect to claim 7, MITSUICHI et al. discloses a cover (e.g., walls of 300 to include 311, 310 and 313) (Paragraphs [0054]-[0056]; Figure 3). The cavity is the open area housing the irradiators and first and second components.
The requirement of “wherein the irradiator irradiates the surface of the first component arranged in the cavity in the cover with ultraviolet rays” is a manner of operating the claimed apparatus and does not impart patentability to the claims. As noted above (See paragraphs [0077]-[0083] and Figures 3, 5, 6 and 7), the apparatus of MITSUICHI et al. is capable of irradiating a first and second component with UV rays in the cavity.
The introduction of gas containing oxygen is also a manner of operating the device and does not impart patentability to the claims. The gas itself is a material worked upon by the device. The courts have generally held that, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
MITSUICHI et al. is capable of providing oxygen gas in the cavity (Paragraph [0062]).
With respect to claim 12, The courts have generally held that, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115. Thus, the types of materials and class of materials used for the first and second component do not impart patentability to the claims.
MITSUICHI et al. also discloses that the first and second components may be selected from compound semiconductor wafers and silicon substrate wafers (Paragraph [0047]).
With respect to claim 13¸ MITSUICHI et al. discloses a method for bonding the first and second substrates using the bonding device of claim 1 (Paragraphs [0005], [0008]-[0010], [0064]-[0069]).
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.
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.
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.
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Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over MITSUICHI et al. (US 2020/0381387) in view of YOSHIDA (US 4,913,335).
With respect to claim 3, MITSUICHI et al. discloses a first placing member, 140 (Paragraphs [0037], [0039], [0046]) and a second placing member, 500 and 321 (Paragraphs [0046], [0054]), such as a stage (as an equivalent to the “second placing member”) and a housing, 310, (Paragraphs [0054], [0055]) that houses the irradiator first and second placing member and conveyor (Figure 3). MITSUICHI et al. does not explicitly disclose that the first placing member is a grip, or equivalent thereof. YOSHIDA discloses an apparatus for semiconductor chip bonding (Abstract). The apparatus comprises a placing member, 108 and 107, to place the wafers. These members comprises arms for gripping (e.g., equivalent to “first placing member) the waver to be moved (Column 4, lines 53-70). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the first placing member of MITSUICHI et al. with gripping arms, as taught by YOSHIDA so that the components may be securely held and transported.
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Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over MITSUICHI et al. (US 2020/0381387) in view of NAGASAKA (US 2007/0242244)
With respect to claim 6, MITSUICHI et al. does not explicitly disclose the claimed brancher. NISHI discloses an exposure apparatus for in semiconductor manufacturing (Abstract; Column 1, lines 20-30). NAGASAKA discloses an exposure apparatus for irradiating semiconductor wafers (Abstract; Paragraph [0026]). The optical element is provided with a branching element that branches the light to two different substrate (Paragraphs [0083], [0084]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a single light source for the irradiator of MITSUICHI et al., and a branching element, as taught by NAGASAKA so that the rays can be split and irradiate both surfaces. Thus, only a single irradiator is needed instead of two.
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Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over MITSUICHI et al. (US 2020/0381387) in view of KINOUCHI et al. (US 2014/0224405).
With respect to claim 8, The introduction of gas containing oxygen and nitrogen is a manner of operating the device and does not impart patentability to the claims. The gas itself is a material worked upon by the device. The courts have generally held that, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
MITSUICHI et al. is capable of providing gas in the cavity (Paragraph [0062]).
MITSUICHI et al. does not explicitly disclose an adjustor to adjust the gas mixture in the cavity.
KINOUCHI et al. discloses a bonding apparatus (Abstract; Title) for semiconductor wafers (Paragraph [0003]). The irradiators comprises a gas mix tailored to the beam source. The gas mix is adjusted using a valve (e.g., equivalent to the adjuster) (Paragraph [0049]-[0050]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide valves to the gas of MITSUICHI et al., as taught by KINOUCHI et al., so that the mixture of gasses within the cavity can be controlled.
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Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over MITSUICHI et al. (US 2020/0381387) in view of DOMMANN et al. (US 6,203,637).
With respect to claim 9, MITSUICHI et al. discloses that the conveyor conveys the first component to the irradiator (Figures 3, 5 and 6) but does not disclose the claimed cover, per se.
DOMMANN et al. discloses a treatment process and apparatus for activating surfaces to be bonded (Abstract; Column 5, lines 60-68; Column 6, lines 1-15)). The irradiator comprises a cover, 1, having a cavity therein (Figure 1) in which gas is introduced, 42, (Column 5, lines 30-45); a first wall of the cover facing the irradiator transmits the irradiation (e.g., wall through which item 3 passes (Figure 1) (Column 4, lines 50-68) and a first opening, 9, in a second wall (e.g., wall in which item 9 is formed) facing the first wall (Figure 1). Such a configuration provides an extremely favorable effect for connections to be established (Column 8, lines 37-45). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, to provide the cover of DOMMANN et al. and the associated structures related thereto, for the irradiator of MITSUICHI et al. in order to provide an extremely favorable effect for connections to be established.
The introduction of gas containing oxygen is also a manner of operating the device and does not impart patentability to the claims. The gas itself is a material worked upon by the device. The courts have generally held that, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
MITSUICHI et al. is capable of providing oxygen gas in the cavity (Paragraph [0062]).
With respect to claim 11, the courts have generally held that In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144. 04, IV, A. Thus, the relative length of the opening to the first component is prima facie obvious absent evidence to the contrary. Moreover, the relative size is based on the size of the first component, which is a material worked upon by the apparatus, which in-and-of itself, does not impart patentability to the claims.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
DOMMANN et al. does not explicitly discloses the claimed inner walls dividing the cavity as claimed, per se. The prior art does not cure the deficiencies of DOMMANN et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745