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 filed 8 July 2026 has been entered.
Applicant’s amendments and arguments (see page 7 of the arguments filed 8 July 2026) have overcome the previous Specification objections. The previous Specification objections have been withdrawn. However, the Applicant’s amendments have provided grounds for new Specification objections.
The examiner fully considered the Applicant’s amendments as to why claim interpretation under 35 USC 112f should not be invoked for claim 1, but the examiner was not persuaded. The Applicant’s amendments have voided interpretation under 35 UCS 112f for claims 3-4. Claim interpretation under 35 USC 112f is invoked for claim 12 that was newly provided in the claim submission filed 8 July 2026.
The Applicant’s amendments have provided grounds for additional 35 USC 112 rejections.
Applicant’s arguments, filed 8 July 2026, with respect to the prior-art rejections of the claims have been fully considered. After conducting an updated search, an additional reference was identified, which teaches the amended portions of the claims. Therefore, the grounds of rejection under 35 USC § 103 still stand.
Status of the Claims
In the amendment dated 8 July 2026, the status of the claims is as follows: Claims 1-6 have been amended. Claims 9-13 are new.
Claims 1-13 are pending.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the “irradiator” and “controller” of claim 1 are not mentioned in the specification.
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 the following:
“support” in claim 1
The generic placeholder is “support” (understood to be a replacement for a means for supporting) and the functional limitation is “configured to support a wafer.”
“irradiator” in claim 1
The generic placeholder is “irradiator” (understood to be a replacement for a means for irradiating) and the functional limitation is “configured to irradiate the street with laser light.”
Structure that is used from the Specification includes a “light source.”
“controller” in claim 1
The generic placeholder is “controller” (understood to be a replacement for a means for controlling) and the functional limitation is “configured to control the irradiator.”
Structure that is used from the Specification includes a “computer.”
“spatial light modulator” in claim 12
The generic placeholder is “modulator” (understood to be a replacement for a means for modulating) and the functional limitation is “such that a phase of the laser light differs between one type of the first region and another type of the first region.”
Structure that is used from the Specification includes a “double-sided telecentric optical system.”
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 following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a support configured to support a wafer,” but the Specification fails to disclose any structure in sufficient detail such that one of ordinary skill in the art would be able to readily understand what a “support” is or that the inventor possessed the claim subject matter at the time of filing.
The limitation “an irradiator configured to irradiate the street with laser light from a side of the front surface” of claim 1 and the limitation “irradiating the street with laser light from a side of the front surface” of claim 6 is not mentioned in the original Specification or in the original set of claims. Instead of irradiating from the front surface 21b, figs. 7 and 9 show that the laser light is irradiated from the back surface 21a. As a result, by using this limitation, the Applicant introduces new matter into the patent application.
This is a new rejection based on the amended portion of the claims.
Claims 3 and 13 recite “an image capturing sensor,” which is not mentioned in the original Specification or in the original set of claims. As a result, by using this limitation, the Applicant introduces new matter into the patent application. The Applicant can overcome this rejection by reciting “an image capturing camera” instead of an “image capturing sensor.”
This is a new rejection based on the amended portion of the claims.
Claims 2, 4-5, and 7-12 are rejected based on their dependency to claims 1 and 6.
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 limitation “support” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1-13 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 “an irradiator configured to irradiate the street with laser light from a side of the front surface” and claim 6 recites: “irradiating the street with laser light from a side of the front surface.” This limitation is unclear in view of the Specification, which discloses irradiating from the back surface 21b (please see figs. 7 and 9). As a result, one of ordinary skill in the art would be confused whether limitation means that the laser light must transfer through the front surface (which is what is claimed) or through the back surface (which is what is disclosed in the Specification). For the purpose of the examination, the limitations will be interpreted as: ““an irradiator configured to irradiate the street with laser light from a side of the back surface” in claim 1 and “irradiating the street with laser light from a side of the back surface” in claim 6.
This is a new rejection based on the amended portion of the claims.
Claims 2-5 and 7-13 are rejected based on their dependency to the independent claims.
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.
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.
Claims 1-3, 5-6, 8-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US-20180277456-A1) in view of Okuma (WO-2020009072-A1, referencing foreign version for drawings and provided English translation for written disclosure).
Regarding claim 1, Abe teaches a laser processing apparatus (“dicing apparatus,” para 0142; construed as being the same apparatus used in the “third embodiment,” para 0162) comprising:
a support (“jig,” para 0142) configured to support (“vacuum sucked,” para 0143) a wafer (wafer 1W, fig. 33) including a substrate (substrate 1S, fig. 31) having a front surface (bottom surface of substrate 1S, fig. 31) and a back surface (top surface of substrate 1S, fig. 31), and a plurality of functional elements (chips 1C, fig. 33) disposed on the front surface (the chips are in the wiring layer 1L, fig. 31) to be adjacent to each other via a street (cutting regions CR, fig. 33);
an irradiator (“laser generating unit,” para 0144) configured to irradiate the street with laser light (laser beam LB2, figs. 31-32) from the back surface (the laser beam transmits through the top surface of substrate 1S, figs. 31-32); and
a controller (a computer is not explicitly disclosed) configured to control the irradiator based on information regarding the street (“irradiation with the laser beam of the first round, based on the pattern information obtained by the IR camera,” para 0166) such that a surface layer of the street is removed in a first region (the metal patterns 20 and test pads 1LBt are construed as the “first region,” annotated fig. 33) of the street (holes 21 are formed in the metal patterns 20 and the test pads 1LBt, para 0167; forming holes is construed as removing a surface layer) and the surface layer remains in a second region (the areas in between the metal patterns 20 and test pads 1LBt are construed as the claimed “second region”) of the street (no holes are formed in these space-in-between regions), wherein
the controller is configured use the information regarding the street (after the “first round” in figs. 31-35, a “second round” of irradiation is executed to form modified regions in figs. 36-37, para 0166; construed as information indicating a modified region is formed) to identify the first region where, when a modified region (modified regions PR, figs. 36-37) is formed in the wafer along a line passing through the street (along lines in the center of holes 21, figs. 33 and 36-37), a fracture (“the wafer 1W is divided (cut) by bending the wafer 1W,” para 0170; when this wafer is bent to cause a cut, this is construed as forming a fracture) extending from the modified region does not reach the street along the line (in the construed “first regions” of annotated fig. 33, at the test pads 1LBt and metal patterns 20, the cut does not reach the surface of the cutting region but instead reaches the bottom of the test pads 1LBt and metal patterns 20 where the holes 21 are located, figs. 36-38), and identify the second region where the facture reaches the street along the line (in the space-in-between the metal patterns 20 and test pads 1LBt of annotated fig. 33, the cut form by bending goes all the way to the top surface of CR; this appears to be the same arrangement shown in fig. 13 of the Instant Application).
Abe, figs. 33 and 36-38 (annotated)
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Abe does not explicitly disclose configured to irradiate from a side; a controller (a computer is not explicitly disclosed).
However, in the same field of endeavor of laser processing semiconductor wafers, Okuma teaches configured to irradiate from a side (spatial light modulator 410 irradiates from the side of workpiece 1, fig. 16); a controller (control unit 500 is “composed of a CPU,” para 0029; a CPU is construed as being equivalent to a computer).
Okuma, fig. 16
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Okuma, by using the laser processing apparatus 200, as taught by Okuma, as the laser generating unit, as taught by Abe, and by using a CPU, as taught by Okuma, to operate the laser processing, as taught by Abe, in order to use a laser apparatus with a dichroic mirror 403 that changes the laser beam by 90 degrees, for the advantage of permitting observation of the state of the workpiece by using an observation camera 488, and in order to use a processing unit that is able to control the operation of each part of the laser processing apparatus (Okuma, paras 0029 and 0059).
Regarding claim 2, in the third embodiment, Abe does not explicitly disclose wherein the controller controls at least one of the support and the irradiator such that the laser light relatively moves along the street, and the controller controls the irradiator such that an output of the laser light is turned ON when the laser light relatively moves on the first region, and the output of the laser light is turned OFF when the laser light relatively moves on the second region.
However, in the first embodiment, Abe teaches the controller controls the irradiator such that an output of the laser light is turned ON when the laser light relatively moves on the first region (laser beam is “intermittently irradiated,” para 049, at the “modified regions” in fig. 14; the modified regions in fig. 14 are construed as the claimed “first region”), and the output of the laser light is turned OFF when the laser light relatively moves on the second region (laser beam is “intermittently irradiated,” para 0149; the space in between the modified regions in fig. 14 are construed as the claimed “second region”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the third embodiment of Abe, in view of the first embodiment of Abe, by intermittently irradiating the laser beam, as taught in fig. 14, so that holes are formed only in the test pads 1LBt and metal patterns 20, as taught in fig. 33, in order to decrease the radiation area of the laser beam, because the insulating film is a low-dielectric-constant film and by reducing the heat, the discoloration of the film can be suppressed (Abe, para 0149).
Abe does not explicitly disclose wherein the controller controls at least one of the support and the irradiator such that the laser light relatively moves along the street.
However, in the same field of endeavor of laser processing semiconductor wafers, Okuma teaches wherein the controller controls at least one of the support (“the control unit 500 moves the support base 230,” para 0093) and the irradiator such that the laser light relatively moves along the street (“the relative movement of the focal point of the laser beam L between each planned cutting line 5b, is carried out by moving the support base 230 along the Y-axis direction using the first moving mechanism 220.,” para 0033; construed as moving the claimed “support”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Okuma, by using a CPU, as taught by Okuma, to control the jig, as taught by Abe, such that the laser beam moved along the cutting line, as taught by Okuma, in order to precisely control a focused laser beam so as to form a straight-line modified region along the planned cutting line on the workpiece (Okuma, para 0014).
Regarding claim 3, Abe teaches further comprising: an image capturing sensor (“IR camera,” para 0166) configured to acquire image data of the street (“pattern information” of the “cutting lines,” para 0166), wherein the controller controls the irradiator based on the image data and the information regarding the street (“the cutting lines CL are aligned (corrected in position), and then the laser beam LB2 emitted,” para 0166) such that the surface layer is removed in the first region and the surface layer remains in the second region (“the laser beam LB2 is moved along the cutting lines aligned based on the pattern information,” para 0166; annotated fig. 33 above shows the “first region” and the “second region”).
Regarding claim 5, Abe teaches wherein the information regarding the street (“pattern information,” para 0166) includes position information (“a substantially center of the cutting region CR in a width direction,” para 0166) of a tip of the fracture that does not reach the first region (the annotated locations where the cut stops in figs. 36-37 above are construed as the claimed “tip;” this construed tip is positioned at the center of the cutting region, fig. 33).
Regarding claim 6, Abe teaches a laser processing method (“Semiconductor device manufacturing method,” title; “laser beam,” abstract) comprising:
a first step (process back surface 102A, fig. 1) of preparing a wafer (wafer 1W, fig. 33) including a substrate (substrate 1S, fig. 31) having a front surface (bottom surface of substrate 1S, fig. 31) and a back surface (top surface of substrate 1S, fig. 31), and a plurality of functional elements (chips 1C, fig. 33) disposed on the front surface (the chips are in the wiring layer 1L, fig. 31) to be adjacent to each other via a street (cutting regions CR, fig. 33); and
a second step (divide into chips 102B, fig. 1) of, after the first step, irradiating the street (figs. 31-32) with laser light based from the back surface (the laser beam transmits through the top surface of substrate 1S, figs. 31-32) on information regarding the street (“irradiation with the laser beam of the first round, based on the pattern information obtained by the IR camera,” para 0166) such that a surface layer of the street is removed in a first region (the metal patterns 20 and test pads 1LBt are construed as the “first region”) of the street (holes 21 are formed in the metal patterns 20 and the test pads 1LBt, para 0167; forming holes is construed as removing a surface layer) and the surface layer remains in a second region (the areas in between the metal patterns 20 and test pads 1LBt are construed as the claimed “second region”) of the street (no holes are formed in these space-in-between regions), wherein
in the second step, the information regarding the street includes information indicating that (after the “first round” in figs. 31-35, a “second round” of irradiation is executed to form modified regions in figs. 36-37, para 0166; construed as information indicating a modified region is formed) is used to identify the first region (annotated in fig. 33 above), when a modified region (modified regions PR, figs. 36-37) is formed in the wafer along a line passing through the street (along lines in the center of holes 21, figs. 33 and 36-37), a fracture (“the wafer 1W is divided (cut) by bending the wafer 1W,” para 0170; when this wafer is bent to cause a cut, this is construed as forming a fracture) extending from the modified region does not reach the street along the line (in the construed “first regions” of annotated fig. 33, at the test pads 1LBt and metal patterns 20, the cut is does not reach the surface of the cutting region but instead reaches the bottom of the test pads 1LBt and metal patterns 20 where the holes 21 are located, figs. 36-38), and to identify the second region where the facture reaches the street along the line (in the space-in-between the metal patterns 20 and test pads 1LBt of annotated fig. 33, the cut form by bending goes all the way to the top surface of CR; this appears to be the same arrangement shown in fig. 13 of the Instant Application).
Abe does not explicitly irradiating from a side.
However, in the same field of endeavor of laser processing semiconductor wafers, Okuma teaches irradiating from a side (spatial light modulator 410 irradiates from the side of workpiece 1, fig. 16).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Okuma, by using the laser processing apparatus 200, as taught by Okuma, as the laser generating unit, as taught by Abe, in order to use a laser apparatus with a dichroic mirror 403 that changes the laser beam by 90 degrees, for the advantage of permitting observation of the state of the workpiece by using an observation camera 488 (Okuma, para 0059).
Regarding claim 8, Abe teaches further comprising: a fourth step (figs. 36-37) of forming the modified region (modified region PR, figs. 36-37) in the wafer along the line (along lines in the center of holes 21, figs. 33 and 36-37), after the first step (irradiating the laser step 102B2 takes place after the process back surface step 102A, fig. 1).
Regarding claim 9, Abe teaches wherein the first region (holes 21along the vertical line in 33; annotated in fig. 33 above) includes a plurality of types of the first regions (holes 21 for the metal pattern 20 and holes 21 for the 1LBt, fig. 33; construed as two “types”), and the controller is configured to change an irradiation condition of the laser light for each type of the first region (there are more holes 21 in the pattern 20 than in the 1LBt’s, fig. 33; the claimed “irradiation condition” that changes is construed as the number of holes 21).
Regarding claim 10, Abe teaches the invention as described above but does not explicitly disclose wherein the controller is configured to control the irradiator such that an output of the laser light is turned ON at a first output when the laser light relatively moves on one type of the first region, and the output of the laser light is turned ON at a second output different from the first output when the laser light relatively moves on another type of the first region.
However, in the same field of endeavor of laser processing semiconductor wafers, Okuma teaches wherein the controller (control unit 500, fig. 7) is configured to control the irradiator (laser processing apparatus 200, fig. 16) such that an output of the laser light is turned ON at a first output (depth of modified regions 7b, fig. 25a) when the laser light relatively moves on one type of the first region (metal patterns 20 taught by Abe in fig. 33), and the output of the laser light is turned ON at a second output (depth of modified regions 7a, fig. 25a) different from the first output (different by a distance “Dv,” fig. 25a) when the laser light relatively moves on another type of the first region (1LBt’s taught by Abe in fig. 33; construed that the focal depth will be different for metal patterns 20 than for 1LBt’s taught by Abe, using the method taught by Okuma in fig. 25a).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Okuma, by forming two rows of modified regions 7a and 7b, as taught by Okuma, when the modified regions PR are formed, as taught by Abe in figs. 36-37, in order to form two different rows of modified regions with a single scan, so that the cutting accuracy improves in the modified area 7 as a result of forming two modified regions 7a and 7b instead of one modified region (Okuma, paras 0022 and 0106).
Regarding claim 12, Abe teaches the invention as described above but does not explicitly disclose wherein the irradiator includes a spatial light modulator, and the controller is configured to control the spatial light modulator such that a phase of the laser light differs between one type of the first region and another type of the first region.
However, in the same field of endeavor of laser processing semiconductor wafers, Okuma teaches wherein the irradiator (laser processing apparatus 200, fig. 16) includes a spatial light modulator (spatial light modulator 410, fig. 16; “pair of lenses 462 and 463 constitute a bilateral telecentric optical system,” para 0055), and the controller is configured to control the spatial light modulator such that a phase of the laser light differs (“the phase pattern of the laser beam L is modulated,” para 0072) between one type of the first region (depth of modified regions 7b, fig. 25a) and another type of the first region (depth of modified regions 7a, fig. 25a; construed that the phase pattern will be different for metal patterns 20 than for 1LBt’s taught by Abe, using the method taught by Okuma in fig. 25a, where the phase pattern is modulated, as taught by Okuma in para 0072).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Okuma, by forming two rows of modified regions 7a and 7b using a spatial light modulator that modulates the phase pattern, as taught by Okuma, when the modified regions PR are formed, as taught by Abe in figs. 36-37, in order to form two different rows of modified regions with a single scan, so that the cutting accuracy improves in the modified area 7 as a result of forming two modified regions 7a and 7b instead of one modified region (Okuma, paras 0022 and 0106).
Regarding claim 13, Okuma teaches further comprising: an infrared image sensor (“IR camera,” para 0166) configured to detect the tip of the fracture (“a substantially center of the cutting region CR in a width direction,” para 0166; “pattern information” of the “cutting lines” are taken by the IR camera, para 0166).
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US-20180277456-A1) in view of Okuma (WO-2020009072-A1, referencing foreign version for drawings and provided English translation for written disclosure) as applied to claims 1 and 9 above and further in view of Genda et al. (US-20200215649-A1)
Regarding claim 4, Abe teaches the invention as described above but does not explicitly disclose further comprising: a distance measuring sensor configured to acquire height data of the street, wherein the controller controls the irradiator based on the height data and the information regarding the street such that the surface layer is removed in the first region and the surface layer remains in the second region.
However, in the same field of laser processing semiconductor wafers, Genda teaches further comprising: a distance measuring sensor (position detecting unit 21, fig. 13; uses a “photodetector,” which is construed as a sensor, para 0032) configured to acquire height data of the street (“detecting the height position of the workpiece,” para 0031; “the position detecting lines 120 are represented by straight lines in the streets 103,” para 0039), wherein the controller controls the irradiator based on the height data and the information regarding the street (“positioning a focused spot 130 of a processing laser beam 32 having a wavelength transmittable through the workpiece 100, within the workpiece 100 on the basis of the height position detected in the height position detecting step,” para 0042) such that the surface layer is removed in the first region and the surface layer remains in the second region (limitations taught by Abe).
Genda, fig. 13
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Genda, by using a height position detecting unit, as taught by Genda, to operate the laser processing, as taught by Abe, in order to control the focal distance of the processing laser beam so that the laser beam’s focus is positioned in a range of approximately 10 to 50 μm at the correct position for the modified layer, for the advantage of using a uniform distance that can be adjusted by the computer, enabling adjustment of the focal distance, e.g., if a different material is present in the streets resulting a different reflectance requiring an adjustment in the focal distance for the laser beam (Genda, paras 0007, 0044, and 0048).
Regarding claim 11, Abe teaches the invention as described above but does not explicitly disclose wherein the controller is configured to control the irradiator to scan the street with the laser light a plurality of times to remove the surface layer of the street in the plurality of types of the first regions.
However, in the same field of laser processing semiconductor wafers, Genda teaches wherein the controller (control unit 50, fig. 4) is configured to control the irradiator to scan the street with the laser light a plurality of times (“successively three times,” para 0049) to remove the surface layer of the street in the plurality of types of the first regions (“to form modified layers,” para 0049).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Genda, by using the laser beam successively three times, as taught by Genda, to form the holes 21, as taught by Abe, in order to adapt the number of times based on the thickness of the workpiece, e.g., a thicker workpiece will require more laser processing holes than a thinner workpiece (Genda, para 0049).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US-20180277456-A1) Okuma (WO-2020009072-A1, referencing foreign version for drawings and provided English translation for written disclosure) as applied to claim 6 above and further in view of Masaru (JP-5968150-B2, referencing foreign version for drawings and provided English translation for written disclosure).
Abe teaches the invention as described above but does not explicitly disclose further comprising: a third step of acquiring the information regarding the street by using a test wafer, before the first step.
However, in the same field of laser processing semiconductor wafers, Masaru teaches further comprising: a third step of acquiring the information (“image processing,” page 15) regarding the street (“modification layer K is formed by a laser beam L,” page 15; construed as inspection information of a cutting region that is ablated by a laser) by using a test wafer (“surface WS of the wafer WA,” page 15; wafer WA is construed as a “test wafer”), before the first step (“after the inspection process, the surface WS side of another wafer W (hereinafter referred to as WB) among the multiple wafers W having the same position and shape of the aforementioned metal pattern is placed on the chuck table 2 of the
laser processing apparatus,” para 0018; processing another wafer WB is construed as the first step and second steps of claim 6 taught by Abe).
Masaru, fig. 3
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Abe, in view of the teachings of Masaru, by using an inspection wafer WA, as taught by Masaru, before processing a wafer, as a taught by Abe, in order to use an inspection step to calibrate and change the output of the laser beam before processing, for the advantage of suppressing the deterioration of pressing quality due to the alteration of preeling of the surface film on the wafers during laser processing (Masaru, para 0008).
Response to Argument
Applicant's arguments filed 8 July 2026 have been fully considered but they are not persuasive.
Claim Interpretation
Page 7 of the arguments states that the claims were amended to avoid interpretation under 35 USC 112(f). However, respectfully submit that besides the exception of a “sensor” that was added to claims 3 and 4, the claims were not amended to include structure that could perform the recited functions. In other words, no additional structure was provided to the claims that were interpreted under 35 USC 112(f). As a result, interpretation under 35 USC 112(f) is still invoked for the present claims.
Rejection under 35 USC § 112
Page 8 of the arguments suggests that reciting a “support” instead of a “support part” would overcome the 35 USC 112 rejection. The Applicant does not provide a rationale as to why this change would overcome the 35 USC 112 rejection.
The examiner is presuming that the Applicant’s argument is that a “support part” invokes 35 USC 112f interpretation, whereas a “support” does not invoke 35 USC 112f interpretation. Presupposing that this is the Applicant’s position, the examiner respectfully disagrees. Page 5 of the Office action filed 30 March 2026 recommends that the Applicant pursue either of two options if the Applicant intends to avoid Claim Interpretation under 35 USC 112(f)—(1) amend the claim to provide sufficient structure or (2) explain that there is sufficient structure in the same. Respectfully submit that neither of these options were taken in the submission filed 8 July 2026.
Rejections under 35 USC § 102
Page 9 appears to distinguish the claimed invention over the invention taught by Abe (US20180277456A1) by stating that in the Abe reference, the “laser beam irradiates from the back surface.” Presumably, the Applicant’s position is that in their invention, the laser beam irradiates from the front surface. However, figs. 7 and 9 of the drawings in the Instant Application show the laser beam as irradiating from the back surface 21b. As a result, the examiner disagrees with the Applicant that this feature can be used as a way to distinguish their claimed invention over that taught by Abe.
Applicant’s remaining arguments have been fully considered but are moot because the arguments do not apply to the new rejections of Abe combined with Okuma.
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.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 7/25/2026
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