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 Objections
Claims 12 and 15 are objected to because of the following informalities:
“prior to grinding of the first substrate in a combined substrate to be processed next” (claim 12, lines 5) should be changed to --prior to a grinding of a first substrate in a combined substrate to be processed next-- (this limitation refers to a first substrate of a combined substrate that is separate from the “combined substrate” recited in claim 10);
“the first thickens measuring apparatus” (claim 15, line 9) should be changed to --the first thickness measuring apparatus--.
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 6-8, 12, and 14-17 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 6 recites each of the limitations “a first transfer opening” and “a second transfer opening” twice (lines 8-13). The second instances of the two limitations are indefinite because they are unclear and fail to inform a person of ordinary skill in the art what they mean. Specifically, do the second instances actually refer to the same “first transfer opening” and “second transfer opening” for both the first and second thickness measuring apparatus, or are these second instances referring to a separate transfer opening (e.g., not shared)? For examination purposes, these limitations are interpreted as best understood.
Each of claims 6, 7, 12, 15, and 16 recites the limitation “the combined substrate includes multiple combined substrates”. This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, does this limitation mean that the combined substrate has other combined substrates attached to it (e.g., a third substrate and a fourth substrate), or does this mean that there exists other combined substrates that are being processed by the claimed invention, or something else? Examiner notes that it is unclear how logically the recited “a combined substrate” could include other, separate substrates if they are not actually attached together. Examiner also notes that the specification does not use this limitation language. For examination purposes, this limitation is interpreted as best understood. Claims 8 and 17 are rejected on the basis they incorporate this limitation of claims 7 and 16 respectively.
Claim 12 recites the limitation “based on the thickness of the first substrate” (line 8). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what it means. Specifically, does “the first substrate” here refer to the first substrate of the next processed combined substrate, or does it refer to the first substrate of the combined substrate recited in claim 10? For examination purposes, this limitation is interpreted as best understood.
Claim 14 recites the limitation “where the detecting of the position of the combined substrate in the horizontal direction is performed” (lines 5-6). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what it means. Specifically, does this limitation refer to the “position” with respect to the first thickness measuring apparatus (claim 13, lines 2-4) or to the “position with respect to the second thickness measuring apparatus (claim 13, lines 6-7)? For examination purposes, this limitation is interpreted as best understood.
Claims 7 and 16 are indefinite because there is insufficient antecedent basis for the limitations listed below, which render the claims unclear and ambiguous. For examination purposes, these limitations are interpreted as best understood.
“the cassette” (claim 7, line 3); Examiner suggests changing this to --a cassette--;
“the cassette” (claim 16, line 3); Examiner suggests changing this to --a cassette--.
Allowable Subject Matter
Claims 1-5, 9-11, 13, and 18 are allowed. As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
Examiner’s statement of reasons for allowance for independent claim 1 is the same as that provided in the 10/14/2025 Office Action (as pertaining to claim 2). Independent claim 10, now rejoined, is allowable for the same reasons as claim 1. Claims 2-5, 9, 11, 13, and 18 are allowable for depending from an allowed claim.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-18 are pending. In view of Applicant’s amendments, claims 6-18, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim (claim 1 or 10). Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between Groups I-IX, as set forth in the 10/14/2025 Office action is hereby withdrawn and claims 6-18 are hereby rejoined and fully examined for patentability under 37 C.F.R. § 1.104. In view of the withdrawal of the restriction requirement, Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. § 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215 (CCPA 1971); MPEP § 804.01.
Claims 6-8, 12, and 14-17 are rejected. Claims 1-5, 9-11, 13, and 18 are allowed.
Drawings – The objections to the drawings are withdrawn in view of Applicant’s remarks. There now appears proper drawings (dated 05/26/2023) in the file wrapper (IFW) that do not use any non-English text.
Specification – The objection to the specification is withdrawn in view of Applicant’s amendment.
Claims – The objections to claims 4-5 are withdrawn in view of Applicant’s amendments.
Response to Arguments
Applicant does not present any arguments pertaining to the rejected claims in this Office Action. Claims 1-5, 9-11, 13, and 18 have been indicated as allowable as discussed herein.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action.
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.
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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.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723