The arguments and amendments submitted 10/01/2025 have been considered. The merits of the claims, however, remain unpatentable as set forth below.
Election/Restrictions
Newly submitted claims 8-12 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Newly submitted claims 8-12, classified in B28D5/047, and the invention originally claimed, classified in B23K26/0853, are related as process and apparatus for its practice. These inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In the instant case, the apparatus as claimed can be used to practice other processes such as trimming rods or other building components. Furthermore, the process as claimed can be practiced by another materially different apparatus. Therefore, there would be a serious search and/or examination burden for the newly submitted claims because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-12 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections - 35 USC § 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.
Claim 6 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 6, line 11 recites the term "a wafer whose thickness is defined by the peeling layer". It is unclear whether this wafer is the same as the one recited in base claim 1 or not. For the purpose of examination, claim 6, line 11 reads on “the wafer, which has a thickness defined by the peeling layer,”.
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 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 is:
a peeling confirmation unit.
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 § 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 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (US PG Pub 20219/0287801) in view of Xiao (CN 207402587U, with citations to attached translation).
Regarding claim 1, Yamamoto teaches a peeling apparatus (Figs. 1-2, 6, 8-9) for peeling off a wafer from an ingot having a peeling layer formed therein at a depth corresponding to the wafer to be manufactured (abstract), the peeling apparatus comprising:
a holding table that holds the ingot (18);
a water supply unit (8) that forms a layer of water on an upper surface of the ingot (para. 0030);
an ultrasonic unit (6) that applies an ultrasonic wave to the upper surface of the ingot through the layer of water (para. 0026);
a peeling confirmation unit (12) that is configured to confirm peeling-off of the wafer to be manufactured, during application of the ultrasonic wave (“While the ultrasonic wave generating step is being carried out as described above, a peel-off detecting step is carried out” per para. 0049), by detecting a variation in the height of the upper surface of the ingot (paras. 0032, 0049-0050);
a wafer delivery unit (comprising 20, 28, and 14 as shown in Fig. 1) that lowers a suction pad having a suction surface facing the upper surface of the ingot to hold the wafer to be manufactured on the suction surface under suction (para. 0033), and delivers the wafer from the ingot (para. 0051 and as shown in Fig. 9); and
a controller (para. 0032);
wherein after the peeling-off of the wafer is confirmed by the peeling confirmation unit (1st sentence in para. 0051), the apparatus is configured to position the water supply unit, the ultrasonic unit, and the peeling confirmation unit at retracted positions (via a first movable arm 24 driven by a first motor 26 per para. 0051 and as shown by the double-sided arrow on arm 24 in Fig. 1) and operates the wafer delivery unit to deliver the wafer from the ingot (via a second movable arm 28 driven by a second motor 30 per para. 0051 and as shown by the double-sided arrow on arm 28 in Fig. 1).
Yamamoto does not explicitly teach the controller is configured to position the water supply unit, the ultrasonic unit, and the peeling confirmation unit at retracted positions and operates the wafer delivery unit to deliver the wafer from the ingot.
However, use of a controller configured to control a motor to position a movable arm and/or perform wafer delivery is conventional in the wafer processing arts, as taught for example by Xiao (claim 1 and Fig. 2).
Furthermore, the courts have held that automation of known functions and manual activities does not distinguish over the prior art if the automation is nothing more than the predictable use of prior art elements according to their established functions. See the following discussion from MPEP § 2114.IV. When determining whether a computer-implemented functional claim would have been obvious, examiners should note that broadly claiming an automated means to replace a manual function to accomplish the same result does not distinguish over the prior art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691 (Fed. Cir. 2007) ("Accommodating a prior art mechanical device that accomplishes [a desired] goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years."); In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958); see also MPEP § 2144.04.III. Furthermore, implementing a known function on a computer has been deemed obvious to one of ordinary skill in the art if the automation of the known function on a general purpose computer is nothing more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007).
Therefore, in view of Xiao’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Yamamoto’s apparatus to include a controller configured to perform Yamamoto’s steps of positioning the water supply unit, the ultrasonic unit, and the peeling confirmation unit at retracted positions and operating the wafer delivery unit to deliver the wafer from the ingot to predictably obtain automation of the these operations and the accompanying increased convenience and efficiency of wafer manufacturing.
Regarding claim 2, Yamamoto teaches a surface height of the upper surface of the ingot varies when the upper surface floats up from the ingot (paras. 0032, 0049-0050); and wherein after the start of peeling, the peeling confirmation unit confirms peeling-off of the wafer by detecting a variation in the height of the upper surface of the ingot at the time of a start of peeling (paras. 0032, 0049-0050 and as shown in Fig. 7).
Regarding claim 3, Yamamoto teaches the peeling confirmation unit confirms peeling-off of the wafer by detecting a variation in the height of the upper surface of the ingot at the time of a start of peeling which is smaller than a variation in the height at the time when the wafer is completely peeled off from the ingot and could fall off the ingot (per para. 0050 and as shown in Fig. 7).
Regarding claim 4, Yamamoto teaches after confirming peeling-off of the wafer, the apparatus is configured: to stop operation of the water supply unit, the ultrasonic unit, and the peeling confirmation unit (para. 0051), and to position the water supply unit, the ultrasonic unit, and the peeling confirmation unit at retracted positions, the retracted positions being positions where the water supply unit, the ultrasonic unit, and the peeling confirmation unit do not hinder lifting and lowering of the suction pad of the wafer delivery unit (para. 0051 and as shown in Figs. 1 and 9).
Use of a controller configured to control these operations is obvious in view of Xiao’s teachings for the reasons described above in the rejection of claim 1.
Regarding claim 6, Yamamoto teaches the lowering of the suction pad (as shown in Fig. 8) comprises:
lower of the suction pad to bring the suction surface of the suction pad into contact with the upper surface of the ingot (para. 0033);
cause a negative pressure on the suction surface of the suction pad to be generated (para. 0033); and
cause the upper surface of the ingot to be held under suction on the suction surface of the suction pad (para. 0033); and thereafter, cause the suction pad of the wafer delivery unit to move upward (as shown in Fig. 9), whereby the wafer, which has a thickness is defined by the peeling layer, is peeled off from the ingot at the peeling layer and is then delivered (as shown in Fig. 9).
Use of a controller configured to control these operations is obvious in view of Xiao’s teachings for the reasons described above in the rejection of claim 1.
Regarding claim 7, Yamamoto teaches the ingot is made of SiC (para. 0008).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto in view of Xiao, as applied to claims 1 and 4 above, further in view of Tanaka (JP 2020021874A, with citations to attached translation).
Regarding claim 5, Yamamoto and Xiao do not teach these features.
However, Tanaka teaches a wafer processing apparatus (abstract) wherein a motor-driven pivoting swing arm is used to retract various units, including a water supply unit, away from the holding table (last paragraph on pg. 9 and third paragraph on pg. 10; see also Fig. 10).
In view of Tanaka’s teachings, it would have been obvious to one of ordinary skill in the art to modify Yamamoto’s apparatus so the ultrasonic unit is coupled to the end of a first swing arm which is moveable to cause the ultrasonic unit to be moved between a first peeling position and first retracted position; and the peeling confirmation unit and the water supply unit are coupled to the end of a second swing arm which is moveable to cause the peeling confirmation unit and the water supply unit to be moved between a second peeling position and second retracted position. One of ordinary skill in the art would have been motivated to utilize swing arms to perform these operations to predictably obtain alternative means to Yamamoto’s linear translation arms which are suitable to perform positioning and retraction of these units and/or accompanying reduction of the size/footprint of the apparatus necessary to perform these operations in comparison to Yamamoto’s linear translation arms.
Response to Arguments
Applicant's arguments filed 10/01/2025 have been fully considered and are addressed below.
Regarding claim 1, Applicant’s arguments regarding the Swoboda reference are moot in view of the new ground(s) of rejection for claim 1, as presented above, and necessitated by applicant’s present amendment and addition of new features to claim 1.
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