The arguments and amendments submitted 11/17/2025 have been considered. The merits of the claims, however, remain unpatentable as set forth below.
Information Disclosure Statement
The information disclosure statement filed 05/12/2025 has been considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 12-13 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 12-13 each recite the new limitation of an “imager". However, there is no support in paras. 0026 and 0037 or anywhere else in the specification for the genus of an imager, and therefore this term is unsupported new matter.
Claim Interpretation
In light of the present amendments to claims 12-13, the prior USC § 112(f) invocations for the measurement unit previously recited are hereby withdrawn.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Morita (US PG Pub 2006/0289410) in view of Okuma (US PG Pub 2018/0236597).
Regarding claim 1, Morita teaches a substrate manufacturing apparatus (abstract, Figs. 19-21), comprising:
a stage (103) on which a semiconductor substrate (102) is disposed;
an irradiation unit (104) that irradiates the semiconductor substrate disposed on the stage (as shown in Figs. 19-21) with a pulsed laser of a predetermined pulse period (para. 0157); and
a controller (comprising 113, 110) that controls a relative position between the stage and the irradiation unit (para. 0159),
wherein the irradiation unit generates a plurality of converging points arranged on a straight line at a predetermined pitch (as shown in Figs. 20-21),
the controller moves the relative position between the stage and the irradiation unit at a predetermined speed (paras. 0159, 0168-0169) in parallel to the straight line on which the plurality of converging points are arranged (as shown in Fig. 21).
Morita does not explicitly teach that the predetermined speed is a speed at which a moving distance of the plurality of converging points in one period of the predetermined pulse period is the same as the predetermined pitch.
However, Okuma teaches a substrate manufacturing apparatus (abstract, Fig. 12) comprising:
an irradiation unit (300) that irradiates the semiconductor substrate disposed on the stage with a pulsed laser of a predetermined pulse period (para. 0062);
a controller (250) moves the relative position between the stage and the irradiation unit at a predetermined speed (“the controller 250 controls…the position of the stage 111, and the driving of the drive unit 232, to relatively move the converging point P along the processing line 5” per para. 0069);
wherein the predetermined speed is a speed at which a moving distance of a converging point in one period of the predetermined pulse period is the same as the predetermined pitch (per para. 0062, “The plurality of marks M…along the processing line 5 at intervals [i.e. where each interval is the moving distance in one period of the pulse period] corresponding to [i.e. which are the same as], for example, a pulse pitch ([which is equal to the] relative speed of the pulse laser light to the object to be processed [times] 1/repetition period of the pulse laser light)” with italic text indicating clarifying and mapping remarks added by examiner). Thus, in view of the fundamental mathematical relationships discussed by Okuma in this passage, it is apparent that Okuma’s speed, in this example, is set at a value at which a moving distance for the converging point in one period of the predetermined pulse period is the same as the moving distance, as explicitly described by Okuma.
Per MPEP §2143.I, applying a known technique to a known device ready for improvement to yield predictable results is sufficient to establish a prima facie case of obviousness. See MPEP §2143.I (rationale D) and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
In view of Okuma’s teachings and/or KSR rationale D, it would have been obvious to one of ordinary skill in the art at the time of filing to configure Morita’s controller so the controller moves the relative position between the stage and irradiation unit at a speed at which the moving distance of the plurality of converging points in one period of the predetermined pulse period is the same as the predetermined pitch, as taught in Okuma’s example, to predictably obtain a repeatable pattern of spaced crack locations across the wafer facilitating a subsequent precise, well-controlled smooth cut on the wafer.
Regarding claim 2, Morita teaches the irradiation unit includes a plurality of laser light sources, and the plurality of converging points are generated by the plurality of laser light source (as shown in Fig. 19).
Regarding claims 3-11, each of the features recited in these claims merely recite a manner of operating the device. Furthermore, none of these claims recites additional structure/components beyond what is recited in parent claim 1. The courts have held that the manner of operating the device does not differentiate apparatus claims from the prior art. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). It is noted that the apparatus of Morita as modified by Okuma clearly has the capability of being operated in the manner recited in each of these claims.
Claims 12-13 were not found in a search of the prior art and thus have not been rejected under 35 U.S.C. 103. However, claims 12-13 are rejected under U.S.C. 112(a) in view of the present amendments, as described above.
Response to Arguments
Applicant's arguments filed 11/17/2025 have been fully considered and are not persuasive for the reasons given below.
Regarding claim 1, Applicant presents an argument contending that the primary reference, Morita, teaches away from the concept of claim 1, which intentionally slows the relative movement to overlap the spots.
However, this argument is not persuasive for at least the following two reasons. First, the feature of intentionally slowing the relative movement to overlap the spots is not recited in claim 1 nor any of the other claims. Secondly, omission of a concept underlying claim 1 or even an actual recitation of a feature in claim 1 among the teachings of the primary reference does not mean that the reference teaches away from the concept and/or claim feature.
Regarding claim 1, Applicant presents an argument contending that Okuma does not teach or suggest “the controller moves the relative position between the stage and the irradiation unit at a predetermined speed in parallel to the straight line on which the plurality of converging points are arranged, and the predetermined speed is a speed at which a moving distance of the plurality of converging points in one period of the predetermined pulse period is the same as the predetermined pitch” as recited in claim 1.
However, this argument is not persuasive as it fails to consider Okuma’s explicit disclosure which teaches and/or suggests those features, as described with additional remarks by examiner in the rejection above.
Regarding claims 3-11, Applicant presents an argument contending that these claims recite structural features and do not recite intended use features.
However, these arguments are not persuasive for at least the following reasons. First, these claims do not teach structural features, and instead merely recite various operations using the structural features of parent claim 1. Secondly, the rejections for these claims do not argue that the recitations of these claims are intended use, but instead that these are merely manners of operating the claimed apparatus.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745