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 .
Request for Continued Examination
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant’s submission filed on 05/15/2026 has been entered.
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 1 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 1 recites the limitation “causing the plurality of second grindstones to come into contact with one of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion from the second surface side and then with the other of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion, such that, in a single second grinding operation, the inclined inner side surface portion of the first thick plate portion is only partially removed, leaving a remaining section of the inclined inner side surface portion formed in the first grinding step” (lines 35-41). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, this limitation has been amended to state “in a single second grinding operation”, which is interpreted to mean a single movement step (e.g., a movement in a single direction of the second grindstones relative to the workpiece). Therefore, it is unclear how such a single grinding operation could be accomplished with the claimed alternative where the second grindstones come into contact first with the first thin plate portion and then with inclined inner side surface portion. This would appear to require two grinding operations (e.g., vertical movement followed by radially outward horizontal movement of the second grindstones). Examiner notes that, depending on Applicant’s response and subsequent amendment, this could also raise a § 112(a) issue for new matter since the specification does not appear to describe this alternative being accomplished in a single operation. Examiner notes that a single operation for the other alternative (i.e., the second grindstones come into contact first with the inclined inner side surface portion and then with the first thin plate portion) is supported by the method described for Figs. 10-11 (i.e., a single vertical movement of the second grindstones). For examination purposes, this limitation is interpreted as best understood.
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.
Nishihara in view of Kitano and Nishihara2
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20180076016 A1 (“Nishihara”) in view of US 20220344149 A1 (“Kitano”) and US 20160064230 A1 (“Nishihara2”).
Nishihara pertains to a workpiece grinding method (Abstr.; Figs. 2A-B, 3A-B). Kitano pertains to a workpiece grinding method (Abstr.; Figs. 1-12). Nishihara2 pertains to a workpiece grinding method (Abstr.; Figs. 1-13). These references are in the same field of endeavor.
Regarding claim 1, Nishihara discloses a workpiece grinding method that is applied when a circular plate-shaped workpiece having a first surface side which includes a first surface and a second surface side which is opposite to the first surface side and which includes a second surface is to be ground (Figs. 2A-B, 3A-B, circular workpiece 11, first surface 11a and first surface side on bottom, second surface 11b and second surface side on top), the workpiece grinding method comprising:
a first grinding step of grinding the workpiece by moving the workpiece and a first grinding wheel relative to each other while rotating them (Figs. 2A-B; ¶¶ 0024-0025, first grinding wheel is moved relative to the workpiece, while both are rotated),
the first grinding wheel including a plurality of first grindstones that each include abrasive grains and are arrayed in an annular area with a first diameter smaller than a diameter of the workpiece (Figs. 2A-B; ¶¶ 0023-0024, first grinding wheel 12 with annularly arrayed grindstones 16 (mislabeled as 14 in Fig. 2A) having first diameter smaller than the workpiece diameter),
and causing the plurality of first grindstones to come into contact with the workpiece from the second surface side, to thereby form in the workpiece a circular plate-shaped first thin plate portion and an annular first thick plate portion that surrounds the first thin plate portion and that has an inner side surface part of which is inclined with respect to the second surface (Figs. 2A-B; ¶¶ 0024-0025, grinding results in circular plate-shaped first thin plate portion 11d and annular first thick plate portion with inclined inner side surface 11e);
the first grinding step including:
an inclined inner side surface forming step of moving the first grinding wheel toward the workpiece in the direction perpendicular to the second surface while moving the workpiece in a direction along the second surface in such a manner that the center of rotation of the first grinding wheel approaches the center of rotation of the workpiece, thereby forming an inclined inner side surface portion of the inner side surface, wherein, in the inclined inner side surface forming step the first grinding wheel and the workpiece are moved relative to each other in a direction inclined with respect to the second surface, in such a manner that the center of rotation of the first grinding wheel approaches the center of rotation of the workpiece (Figs. 2A-B; ¶¶ 0024-0025, the grinding wheel is moved vertically down towards the second surface 11b while moving horizontally towards the center of rotation of the workpiece (i.e., the grinding wheel is moving in an inclined direction relative to the workpiece), resulting in an inclined inner side surface 11e);
and a second grinding step of, after the first grinding step, grinding the workpiece by moving the workpiece and a second grinding wheel relative to each other while rotating them (Figs. 3A-B; ¶¶ 0026-0027, second grinding wheel is moved relative to the workpiece, while both are rotated),
the second grinding wheel including a plurality of second grindstones that each include abrasive grains smaller than those of the plurality of first grindstones and are arrayed in an annular area with a second diameter smaller than the diameter of the workpiece (Figs. 3A-B; ¶¶ 0026, second grinding wheel 32 with annularly arrayed grindstones 36 (mislabeled as 34 in Fig. 3A) with smaller abrasive grains, the grinding wheel 32 having second diameter smaller than the workpiece diameter),
and causing the plurality of second grindstones to come into contact with one of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion from the second surface side...thereby removing a damaged layer of the workpiece... (Figs. 3A-B; ¶¶ 0026-0027, finish grinding is vertical, removing material (including a “damaged layer”) from the first thin plate portion 11d).
Nishihara does not explicitly disclose:
the first grinding step including:
a vertical inner side surface forming step of moving the first grinding wheel toward the workpiece in a direction perpendicular to the second surface which intersects the second surface, such that a center of rotation of the first grinding wheel does not approach a center of rotation of the workpiece, thereby forming a vertical inner side surface portion of the inner side surface,
wherein the vertical inner side surface forming step and the inclined inner side surface forming step are both performed by the same first grinding wheel, sequentially, in the first grinding step;
a second grinding step of...
causing the plurality of second grindstones to come into contact with one of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion from the second surface side and then with the other of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion, such that, in a single second grinding operation, the inclined inner side surface portion of the first thick plate portion is only partially removed, leaving a remaining section of the inclined inner side surface portion formed in the first grinding step, thereby removing a damaged layer of the workpiece, to thereby form in the workpiece a circular plate-shaped second thin plate portion that is larger in diameter but thinner than the first thin plate portion and an annular second thick plate portion that surrounds the second thin plate portion and which includes the remaining section of the inclined inner side surface portion.
However, the Nishihara/Kitano/Nishihara2 combination makes obvious this claim.
Kitano discloses:
the first grinding step including: a vertical inner side surface forming step of moving the first grinding wheel toward the workpiece in a direction perpendicular to the second surface which intersects the second surface, such that a center of rotation of the first grinding wheel does not approach a center of rotation of the workpiece, thereby forming a vertical inner side surface portion of the inner side surface, and an inclined inner side surface forming step of moving the first grinding wheel toward the workpiece in the direction perpendicular to the second surface while moving the workpiece in a direction along the second surface in such a manner that the center of rotation of the first grinding wheel approaches the center of rotation of the workpiece, thereby forming an inclined inner side surface portion of the inner side surface, wherein, in the inclined inner side surface forming step the first grinding wheel and the workpiece are moved relative to each other in a direction inclined with respect to the second surface, in such a manner that the center of rotation of the first grinding wheel approaches the center of rotation of the workpiece, and wherein the vertical inner side surface forming step and the inclined inner side surface forming step are both performed by the same first grinding wheel, sequentially, in the first grinding step (Figs. 9a-c, showing first a vertically downward grinding movement (breaching surface 11 perpendicularly) followed by an inclined movement (i.e., the grinding wheel is moved vertically downwards while moving horizontally towards the center of the workpiece) (compare Fig. 9c with Fig. 9a), resulting in a vertical inner side surface portion followed by an inclined inner side surface portion (see Fig. 9c), where the vertical inner side surface forming step and the inclined inner side surface forming step are done sequentially with the same grinding wheel; ¶¶ 0059-0064, 0037; see Figs. 2, 3a-b).
Nishihara2 discloses:
a second grinding step of...causing the plurality of second grindstones to come into contact with one of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion from the second surface side and then with the other of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion, such that, in a single second grinding operation, the inclined inner side surface portion of the first thick plate portion is only partially removed, leaving a remaining section of the inclined inner side surface portion formed in the first grinding step, thereby removing a damaged layer of the workpiece, to thereby form in the workpiece a circular plate-shaped second thin plate portion that is larger in diameter but thinner than the first thin plate portion and an annular second thick plate portion that surrounds the second thin plate portion and which includes the remaining section of the inclined inner side surface portion (Figs. 9-13; ¶¶ 0044-0052, after rough grinding where an inclined inner side surface C1 (see Figs. 4, 7; ¶ 0038) is created, finish grinding (in a vertically downward operation) is performed where first the inclined surface C1 is first contacted and then the first thin plate portion as the finishing grindstones are moving vertically downward (Fig. 12, surface B1 (compare with Fig. 11)), leaving a remaining section of the inclined surface C1 (thereby removing a “damaged layer”), resulting in the recited wafer grinding configuration).
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 Kitano and Nishihara2 with Nishihara by adding the vertical rough grinding step of Kitano and modifying the Nishihara second grinding step (finishing grinding) as taught by Nishihara2.
With respect to the vertical rough grinding step, it would have been obvious to a person of ordinary skill in the art to make this modification because this would allow for a larger usable space for the silicon devices compared to only using the inclined inner surface taught by Nishihara. That is, for a given wafer thickness, the combined vertical-and-then-inclined inner surfaces formed as a result of this Kitano teaching results in a bottom portion (where there is no inclined inner surface, see Kitano Fig. 9b) that has a larger diameter than what is taught by Nishihara alone for the same inclined inner surface angle (see Nishihara Fig. 2B), providing more area for silicon devices (see Nishihara2 ¶ 0051). Examiner notes that Kitano teaches that the vertical rough grinding step (“vertical inner side surface forming step”) is followed by the inclined rough grinding step (“inclined inner side surface forming step”), which are performed by the same grinding wheel (Kitano Figs. 9a-c; ¶¶ 0059-0064, 0037).
With respect to the second grinding step, it would have been obvious to a person of ordinary skill in the art to make this modification because this teaching of Nishihara2, like Kitano as discussed above, would also increase the area available for silicon devices (see Nishihara2 Figs. 11-13, where part of the inclined inner surface C1 is ground away during finishing grinding) compared to the method of Nishihara (see Nishihara Figs. 3A-B, where finishing grinding takes place radially inward of the inclined inner surface) (Nishihara2 ¶ 0051, “As a result, diameter expansion of the second bottom surface B2...by 1 mm in present invention product 2 (product corresponding to the second embodiment) relative to the comparative example (product corresponding to the related art) could be confirmed.”). It should be noted that this added operation from Nishihara2 consists of a single operation of vertical movement by the second grindstones relative to the workpiece (see Nishihara2 Fig. 12). It should also be noted that a person of ordinary skill in the art would recognize that the type of finishing grinding described by Nishihara and Nishihara2 would remove a “damaged layer” caused by the rough grinding (see US 20080076334 A1 (“Yoshida2”) ¶¶ 0062, 0067, “By the finish grinding, the mechanically damaged layer formed by the rough grinding as indicated by the grinding streaks 9 shown in FIG. 6A is removed.”). Examiner notes that Nishihara and Nishihara2 appear to have three inventors in common.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claim 3 has been canceled. Claims 1-2 and 4-6 are pending. Claims 2 and 4-6 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Claims – Claim 1 is rejected.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. The comments below are in addition to the explanations provided for the rejection of claim 1, which also address Applicant’s arguments.
Regarding the Kitano reference, Examiner disagrees with Applicant’s characterization of Kitano (Reply at 8-9). Fig. 9a of Kitano is not a starting position—rather, it is an intermediate position of the grinding wheel (Kitano ¶ 0019, “FIG. 9a is a diagram describing the semiconductor apparatus 100 in the middle of the grinding step S101 in another example.”). The beginning of the grinding step S101 that is not shown in Fig. 9a, but would precede it, is shown in Figs. 2, 3a-b and described in ¶ 0037. Thus, the Kitano embodiment of Fig. 9a includes the initial process of Figs. 2, 3a-b (where the grindstone initially moves vertically downward to begin grinding a fresh substrate), and a short moment thereafter, the inclined grinding of Figs. 9a-c would occur.
Regarding the Nishihara2 reference, Examiner disagrees with Applicant’s characterization of Nishihara2 (Reply at 9-10) and the rejection. Examiner relies on Nishihara2’s second embodiment (Nishihara2 ¶¶ 0044-0052, Figs. 9-13 (but more specifically Fig. 12)). To be clear, Examiner relies on the vertical grinding operation using the finishing grindstones as shown in Fig. 12 (Nishihara ¶¶ 0047-0050), which shows the curved/inclined surface C1 being contacted and ground away first (in a vertical direction) until the finishing grindstones reach a depth where the first thin plate portion is then also ground (in a vertical direction). Nishihara2 describes this as the “third grinding step”, which is the last grinding step that would result in a completed substate (Nishihara Fig. 13). Applicant should note that the limitation “in a single second grinding operation” is not a term used in the specification. And even though Applicant stresses the significance of this limitation, the specification does not describe exactly what is considered a “single second grinding operation”, and whether this would include operation steps required to start rotation of, extend, and properly position a second (finishing) grinding wheel after the grinding operations with the first grinding wheel are complete.
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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/KENT N SHUM/ Date: June 26, 2026Examiner, Art Unit 3723
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