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 .
Information Disclosure Statement
The information disclosure statement filed on 10/12/2023 fails to comply with 37 C.F.R. § 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 C.F.R. § 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Specification
The abstract of the disclosure (Preliminary Amendment at 3) is objected to because the last two sentences refer to purported merits of the invention. Correction is required. MPEP § 608.01(b). No new matter should be entered.
The amended statement of incorporation by reference to International Application No. PCT/EP2022/059378 and German Application No. DE 102021109459.3 (Preliminary Amendment at 2) is ineffective because it was added on the date of entry into the U.S. national phase, which is after the filing date of this application. The filing date of this U.S. national stage application is the filing date of the associated international application, which is 04/08/2022. MPEP § 1893.03(b). Thus, the specification amendment of 10/12/2023 is new matter. MPEP § 608.01(p)(I)(B). To be clear, the objection is not to the priority claim; the objection is only with respect to the incorporation-by-reference statement.
Applicant is required to cancel the new matter in the reply to this Office action.
Claim Objections
Claims 1-14 are objected to because of the following informalities:
“Method” (claim 1, line 1) should be changed to --A method--;
“Method” (claims 2-10, line 1) should be changed to --The method--;
“provided on at least one surface thereof with a” (claim 1, lines 6-7) should be changed to --provided with, on at least one surface thereof, a--;
“for fixing a material block to” (claim 8, lines 1-2) should be changed to --, wherein the material block is fixed to--;
“for fixing a material block made from” (claim 9, lines 1-2) should be changed to --, wherein the material block is made from--;
“Workpiece carrier” (claim 11, line 1) should be changed to --A workpiece carrier--;
“the expendable workpiece carrier” (claim 11, lines 1-2) should be changed to --an expendable workpiece carrier--;
“and which has” (claim 11, line 3) should be changed to --, comprising--;
“Workpiece carrier” (claims 12-14, line 1) should be changed to --The workpiece carrier--.
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.
Claim 14 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 14 recites the limitation “pre-applied layer of the adhesive that can only be activated by external influence on two opposite surfaces.” Although the specification uses similar language (e.g., Spec. p. 7, lines 1-10), this limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, under the broadest reasonable interpretation in light of the specification, this limitation could mean that each surface of the pre-applied layer of the adhesive can only be activated by external influence (e.g., heat). Or, it could mean that external influence on both opposite surfaces are required in order for the adhesive to activate. The specification appears to support only the former interpretation, and not the latter. For examination purposes, this former interpretation will be used. To the extent the latter interpretation is intended, this may result in a rejection under § 112(a) for lack of written description and/or enablement.
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
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.
Banzawa in view of Van Den Brand
Claims 1-9 and 11-14 are rejected under 35 U.S.C. § 103 as being unpatentable over US 6182729 B1 (“Banzawa”) in view of US 20220216087 A1 (“Van Den Brand”).
Banzawa pertains to a system for processing and slicing silicon ingots (Abstr.; Figs. 6-8, 12). Van Den Brand pertains to a method and apparatus for transferring silicon components (Abstr.; Figs. 1A-D; ¶¶ 0001-0006). These references are in the same field of endeavor that includes silicon wafer processing.
Regarding claim 1, Banzawa discloses a method for fixing a material block to a machining device for mechanically machining the material block, in which the material block is adhesively bonded to an expendable workpiece carrier, and the workpiece carrier is connected to the machining device (Figs. 6-8, 12; 5:56-6:12, 6:39-53, material block 13 is fixed to machining device 326/332 via adhesive bond to expendable workpiece carrier 20, which is connected to the machining device 326/332 during operation),
characterized in that
the expendable workpiece carrier is provided [with,] on at least one surface thereof[,] a...layer of an adhesive...(Figs. 6-8, 12; 5:56-6:12, 6:39-53, expendable workpiece carrier 20 has a layer of adhesive on one surface),
and the material block is adhesively bonded to the workpiece carrier... (Figs. 6-8, 12; 5:56-6:12, 6:39-53, material block 13 is adhesively bonded to the expendable workpiece carrier 20).
Banzawa does not explicitly disclose:
the expendable workpiece carrier is provided [with,] on at least one surface thereof[,] a pre-applied layer of an adhesive that can only be activated by external influence,
and the material block is adhesively bonded to the workpiece carrier by activation of the adhesive.
However, the Banzawa/Van Den Brand combination makes obvious this claim.
Van Den Brand discloses:
the expendable workpiece carrier is provided [with,] on at least one surface thereof[,] a pre-applied layer of an adhesive that can only be activated by external influence (Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m, which has to be heated in order to be activated),
and the material block is adhesively bonded to the workpiece carrier by activation of the adhesive (Figs. 1A-C; ¶¶ 0025-0030, the hot-melt adhesive 20m is heated, and components 11/12/13 are adhesively bonded to workpiece carrier 20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Van Den Brand with Banzawa by changing the type of adhesive used to a hot-melt adhesive. This would have been obvious to a person of ordinary skill in the art because it would have been obvious to try different known adhesives to see which one results in the desired combination of efficiency, adhesion performance, cleanliness, and low cost when adhering the silicon ingots to the workpiece carrier (Banzawa 2:26-57, discussing the objectives of the ingot slicing system, which includes “to reduce the costs”, “increase the manufacturing efficiency”, and “upgrade the quality of the wafers”). Further, a person of ordinary skill in the art would have been familiar with the various types of adhesives used in the silicon wafer processing industry and would have known to try different adhesives and/or mounting techniques based on operational parameters and adhesive/material availability (US 20100126490 A1 (“Bakshi”) ¶ 0027, “In one exemplary implementation, the work piece 150 is attached to the plate 160 by glue 310. It is appreciated that gluing of the work piece 150 to the plate 160 ensures secured holding of sliced wafers to the plate 160. One skilled in the art can envision that the work piece 150 can be attached to the plate 160 using other techniques that are well known in the art.”).
Examiner interprets the limitation “a pre-applied layer of an adhesive that can only be activated by external influence” to include the meaning that the method or apparatus is in an environment that does not spontaneously activate the adhesive, even though the adhesive is actually sticking onto an object, such as in the example of a hot-melt adhesive (see Spec. p. 6, line 11–p. 7, line 9). For example, a hot-melt adhesive in a high temperature environment would be activated in that it would be melted and sticky, and capable of adhering to another object; but the same hot-melt adhesive in a 70°F environment would not be melted nor have a sticky external surface (it would be a solid), even though it may be already adhering one object to another.
Regarding claim 2, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. The Banzawa/Van Den Brand combination makes obvious an adhesive that can be activated by the influence of heat and/or the application of pressure is used as the activatable adhesive (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m, which has to be heated in order to be activated).
Regarding claim 3, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. The Banzawa/Van Den Brand combination makes obvious that the activatable adhesive is chosen such that the expendable workpiece carrier can be stored with the pre-applied layer of the activatable adhesive for a period of several weeks or months before use without losing its activatable adhesive function (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m, and is capable of being stored with the pre-applied adhesive as recited).
Regarding claim 4, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. The Banzawa/Van Den Brand combination makes obvious that a hot-melt adhesive is used as the activatable adhesive (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m).
Regarding claim 5, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. The Banzawa/Van Den Brand combination makes obvious that the expendable workpiece carrier is or can be stored with the pre-applied layer of the activatable adhesive for several weeks before the material block is adhesively bonded to the workpiece carrier by activation of the adhesive (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m, and is capable of being stored with the pre-applied adhesive as recited).
Regarding claim 6, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. Banzawa further discloses that the expendable workpiece carrier is clamped into a workpiece holder of the machining device (Figs. 6-8, 12; 5:56-6:12, 6:39-53, expendable workpiece carrier 20 is connected to a holder of the machining device 326/332 during operation (holder arm near element 13 (Fig. 12)) or to holder 21).
Regarding claim 7, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above.
Banzawa further discloses:
that the expendable workpiece carrier is provided with the...layer of the activatable adhesive on two opposite surfaces, and the workpiece carrier is adhesively bonded into the workpiece holder of the machining device... (Figs. 6-8, 12; 5:56-6:12, 6:39-53, expendable workpiece carrier 20 has adhesive on both the top and bottom surfaces, and is adhesively bonded to holder 21).
Banzawa does not explicitly disclose:
that the expendable workpiece carrier is provided with the pre-applied layer of the activatable adhesive on two opposite surfaces, and the workpiece carrier is adhesively bonded into the workpiece holder of the machining device by activation of the adhesive.
However, the Banzawa/Van Den Brand combination makes obvious the method of claim 7 for the same reasons as for claim 1, with the addition that the adhesive teachings of Van Den Brand are applied to the second, top surface of the expendable workpiece carrier 20 of Banzawa for adhesive bonding to holder 21 (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030, the pre-applied hot-melt adhesive 20m is heated, and components 11/12/13 are adhesively bonded to workpiece carrier 20).
Regarding claim 8, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. Banzawa further discloses [wherein the] material block [is fixed] to a wire saw for cutting the material block into individual wafers or small material block fragments (Figs. 6-8, 12; 5:56-6:12, 6:39-53, material block 13 is fixed to machining device (wire saw) 326/332 via adhesive bond to expendable workpiece carrier 20, which is connected to the machining device 326/332 during operation).
Regarding claim 9, the Banzawa/Van Den Brand combination makes obvious the method of claim 8 as applied above. Banzawa further discloses [wherein the] material block [is] made from silicon, germanium, sapphire, quartz, glass, ceramic, silicon carbide or silicon nitride (5:26-35, material block 13 is made of silicon).
Regarding claim 11, Banzawa discloses a workpiece carrier which is suitable for use as [an] expendable workpiece carrier for fixing a material block to a wire saw for cutting the material block into individual wafers (Figs. 6-8, 12; 5:56-6:12, 6:39-53, material block 13 is fixed to machining device (wire saw) 326/332 via adhesive bond to expendable workpiece carrier 20, which is connected to the machining device 326/332 during operation)[, comprising]
a...layer of an adhesive... (Figs. 6-8, 12; 5:56-6:12, 6:39-53, expendable workpiece carrier 20 has a layer of adhesive on one surface ).
Banzawa does not explicitly disclose:
a pre-applied layer of an adhesive that can only be activated by external influence on at least one surface.
However, the Banzawa/Van Den Brand combination makes obvious this claim.
Van Den Brand discloses:
a pre-applied layer of an adhesive that can only be activated by external influence on at least one surface (Figs. 1A-C; ¶¶ 0025-0030 workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m, which has to be heated in order to be activated).
The obviousness rationale for claim 11 is the same as for claim 1.
Regarding claim 12, the Banzawa/Van Den Brand combination makes obvious the workpiece carrier of claim 11 as applied above. The Banzawa/Van Den Brand combination makes obvious that the activatable adhesive is an adhesive that can be activated by thermal influence and/or by the application of pressure (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m, which has to be heated in order to be activated).
Regarding claim 13, the Banzawa/Van Den Brand combination makes obvious the workpiece carrier of claim 11 as applied above. The Banzawa/Van Den Brand combination makes obvious that the activatable adhesive is a hot-melt adhesive (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030 expendable workpiece carrier 20 has a pre-applied, hot-melt adhesive 20m).
Regarding claim 14, the Banzawa/Van Den Brand combination makes obvious the workpiece carrier of claim 11 as applied above.
Banzawa further discloses:
that the workpiece carrier is furnished with the...layer of the adhesive... (Figs. 6-8, 12; 5:56-6:12, 6:39-53, expendable workpiece carrier 20 has adhesive on both the top and bottom surfaces, and is adhesively bonded to holder 21 and material block 13).
Banzawa does not explicitly disclose:
that the workpiece carrier is furnished with the pre-applied layer of the adhesive that can only be activated by external influence on two opposite surfaces.
However, the Banzawa/Van Den Brand combination makes obvious the workpiece carrier of claim 14 for the same reasons as for claim 11, with the addition that the adhesive teachings of Van Den Brand are applied to the second, top surface of the expendable workpiece carrier 20 of Banzawa for adhesive bonding to holder 21 (Van Den Brand Figs. 1A-C; ¶¶ 0025-0030, the pre-applied hot-melt adhesive 20m is heated, and components 11/12/13 are adhesively bonded to workpiece carrier 20).
Banzawa in view of Van Den Brand and Donofrio
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over US 6182729 B1 (“Banzawa”) in view of US 20220216087 A1 (“Van Den Brand”) and US 20200211850 A1 (“Donofrio”).
Banzawa pertains to a system for processing and slicing silicon ingots (Abstr.; Figs. 6-8, 12). Van Den Brand pertains to a method and apparatus for transferring silicon components (Abstr.; Figs. 1A-D; ¶¶ 0001-0006). Donofrio pertains to a system for processing silicon ingots (Abstr.; Fig. 9). These references are in the same field of endeavor that includes silicon wafer processing.
Regarding claim 10, the Banzawa/Van Den Brand combination makes obvious the method of claim 1 as applied above. Banzawa and Van Den Brand do not explicitly disclose that the expendable workpiece carrier is provided from a composite material. However, the Banzawa/Van Den Brand/Donofrio combination makes obvious this claim.
Donofrio discloses:
the expendable workpiece carrier is provided from a composite material (Fig. 9; ¶ 0157, carrier 72 is made from a composite material).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Donofrio with the Banzawa/Van Den Brand combination by changing the carrier material to be a composite material. This would have been obvious to a person of ordinary skill in the art because it would have been obvious to try different known carrier materials to see which one results in the desired combination of rigidity, cleanliness, and low cost for adhering the silicon ingots to the workpiece carrier (Banzawa 2:26-57, discussing the objectives of the ingot slicing system, which includes “to reduce the costs”, “increase the manufacturing efficiency”, and “upgrade the quality of the wafers”). Further, a person of ordinary skill in the art would have been familiar with the various types of carrier materials used in the silicon wafer processing industry and would have known to try different materials based on operational parameters and material availability (US 20100126490 A1 (“Bakshi”) ¶ 0026, “The plate 160 may be glass, ceramic, plastic, silicon or a like material.”).
Status of Claims
Claims 1-14 are pending. Claims 1-14 are rejected.
Conclusion
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