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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
The “tilting device” of claim 1
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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:
“a tilting device” of claim 1 with means for “tilting a rotation axis of a chuck that holds the workpiece.” The tilting device is neither shown or described in terms of structure. For the purpose of examination, the examiner will consider this to be any structure that allows for or causes tilting.
“a measurement device” of claim 1 with means for “[measuring] a film thickness of the workpiece after fine grinding in a non-contact manner.” As understood from the specification, the “measurement device” is considered a thickness measurement sensor and/or equivalents thereof [Application Publication; paragraph 0026].
“a control device” of claim 1 with means to “[operate] a shape of the workpiece after the fine grinding on the basis of a measurement value of the measurement device, calculates a tilt angle of the tilting device such that a difference between a maximum thickness and a minimum thickness of the workpiece after the fine grinding decreases, and tilts the chuck by the tilt angle.” The specification states “The control device 8 controls each of components constituting the processing system 1. The control device 8 includes a CPU and a memory, for example. A function of the control device 8 may be implemented by control using software or may be implemented by operating using hardware.” [Application Publication; paragraph 0038].
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 Rejections - 35 USC § 112(a)
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.
Claim 1 is 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.
Regarding claim 1, the claimed “tilting device capable of tilting a rotation axis of a chuck that holds the workpiece” is not described or shown in the specification in terms of structure. By not showing the structure and/or describing the structure, then there is a lack of support in the specification for the structure of the claimed tilting device. While one of ordinary skill in the art my conceive of multiple ways to create a “tilting device” structure, these structures would be outside of the enabling disclosure and would extend to an limitless number of structures, all of which are not shown or described. Per MPEP 2173.05(g):
Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715, 218 USPQ at 197.
Claim Rejections - 35 USC § 112(b)
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 1, and those claims depending therefrom including claim 2, 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.
Regarding claim 1, the claimed “a control device that operates a shape of the workpiece after the fine grinding on the basis of a measurement value of the measurement device, calculates a tilt angle of the tilting device such that a difference between a maximum thickness and a minimum thickness of the workpiece after the fine grinding decreases, and tilts the chuck by the tilt angle” is indefinite.
First, it’s unclear what is meant by “operates a shape of the workpiece.” This could mean that it moves the shape, creates the shape, abrades the shape, etc. It is ambiguous as to what actions are and are not taking place under the term “operates a shape.”
Furthermore, “a shape” isn’t considered a tool that the control device would be capable of operating. For example, a control device can operate a measurement device or a tilting device because those are parts of the processing system, but the shape is understood to be part of the workpiece. For the purpose of examination, the examiner will consider this to be “a control device [that operates a grinding tool to shape the workpiece]
Regarding claim 1, the claim introduces “a measurement device that measures a film thickness of the workpiece after fine grinding in a non-contact manner” and “a control device [that operates a grinding tool to shape the workpiece] after the fine grinding on the basis of a measurement value of the measurement device” and “”calculates a tilt angle of the tilting device such that a difference between a maximum thickness and a minimum thickness of the workpiece after the fine grinding decreases.”
Applicant only explicitly claims that the “film thickness” is measured by the measurement device. The claim implies that the measurement device measures multiple thicknesses to achieve a maximum and a minimum thickness, but never explicitly states that it does.
Regarding claim 1, the claimed “after fine grinding in a non-contact manner” is indefinite. Per MPEP 2173.05(g):
A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004), the court noted that the claim term "operatively connected" is "a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components," that is, the term "means the claimed components must be connected in a way to perform a designated function."
The functional language “that operates a shape of the workpiece after the fine grinding” and “calculates a tilt angle…after the fine grinding decreases” relates to the control device. The control device, as interpreted above under 35 USC 112(f) above, is a piece of hardware with software on it for performing the claimed function. The issue is that the function that is being claimed seems to inherently require a “fine grinding” to be performed, but does not explicitly require fine grinding to be performed. Therefore, it’s ambiguous what this functional language requires. Does this require a “fine grinding” or simply require “a control device that operates a shape of the workpiece
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US-2017/0095902) in view of Nakata (US-2011/0294233).
Regarding claim 1 (Currently Amended), Yoshida (US-2017/0095902) discloses a processing system that processes a workpiece by pre-grinding and fine grinding in this order, the processing system comprising:
a tilting device (inclination adjustment means 43) capable of tilting a rotation axis of a chuck (chuck table 41) that holds the workpiece (workpiece W) (Figs. 3A-3D);
a measurement device (thickness measurement means 88) that measures a thickness of the workpiece (“at the finish grinding position, thickness measurement means 88 of the contactless type for measuring the thickness of the plate-shaped workpiece W is provided adjacent the finish grinding means 80”) [Yoshida; paragraph 0030] after fine grinding in a non-contact manner (The claimed “after fine grinding in a non-contact manner” is considered intended use akin to stating when the Applicant desires to use the measurement device, and not explicitly requiring any step of “fine grinding” and or requiring any additional structure to the “measurement device.”) ; and
a control device (control means 90) that operates a shape of the workpiece after the fine grinding on the basis of a measurement value of the measurement device (“Then, while the finish grinding means 80 and the inclination adjustment means 43 are operated on the basis of a measurement result of the thickness, the inclination of the chuck table 41 is finely adjusted. After the inclination adjustment, the plate-shaped workpiece W is ground to the finish thickness and is formed so as to have a uniform thickness.”) [Yoshida; paragraph 0032], and tilts the chuck by the tilt angle, calculates a tilt angle of the tilting device such that a difference between a maximum thickness and a minimum thickness of the workpiece (i.e. maximum_thickness – minimum_thickness = difference) after the fine grinding decreases (In Figs. 3A and 3B, the difference represents a flatness, and tilts the chuck by the tilt angle,
wherein the workpiece after the fine grinding is reprocessed by pre-grinding and fine grinding in this order with the chuck tilted by the tilt angle.
Yoshida fails to disclose a measuring a “film thickness of the workpiece.” However, Nakata (US-2011/0294233) teaches a measurement device that measures a film thickness of the workpiece (“the thickness of the protective member 24 and the thickness distribution in the wafer 21 are measured using film thickness measurement by interference of a front surface and a back surface of a measurement target. Accordingly, the thickness of the wafer 21 can be measured in a non-contact manner with accuracy”) [Nakata; paragraph 0055]. Since Nakata teaches that film thickness measurement by interference produces an accurate thickness measurement of the wafer, it therefore would’ve been obvious to one of ordinary skill in the art to incorporate a film thickness measurement into Yoshida, as taught by Nakata, in order to measure the thickness, as desired by Yoshida [Yoshida; paragraph 0032], using an accurate and known system such as taught by Nakata [Nakata; paragraph 0055].
Regarding claim 2, Yoshida discloses the processing system according to claim 1, further comprising:
an index table (turntable 40) that rotates and moves the chuck (chuck table 41) on a predetermined trajectory (circular trajectory) (Fig. 1), wherein the measurement device (88) is installed on the trajectory as viewed from the top (Fig. 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-6656818, US-5816895, US-2020/0316750, US-20200180105, US-20090186562, and US-2002/0081954 are pertinent to claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-270-5947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL D CRANDALL/Examiner, Art Unit 3723