Prosecution Insights
Last updated: April 19, 2026
Application No. 18/325,337

WORKPIECE GRINDING METHOD

Final Rejection §103
Filed
May 30, 2023
Examiner
SHUM, KENT N
Art Unit
3723
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Disco Corporation
OA Round
2 (Final)
27%
Grant Probability
At Risk
3-4
OA Rounds
3y 4m
To Grant
65%
With Interview

Examiner Intelligence

Grants only 27% of cases
27%
Career Allow Rate
26 granted / 95 resolved
-42.6% vs TC avg
Strong +38% interview lift
Without
With
+38.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
67 currently pending
Career history
162
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
42.9%
+2.9% vs TC avg
§102
18.1%
-21.9% vs TC avg
§112
31.7%
-8.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 95 resolved cases

Office Action

§103
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 . 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 (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, 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... (Figs. 3A-B; ¶¶ 0026-0027, finish grinding is vertical, removing material 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, 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, a second grinding step of... causing the plurality of second grindstones to come into contact with...and then with the other of the first thin plate portion or the inclined inner side surface portion of the first thick plate portion, in such a manner that 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, 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, 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 (Figs. 9a-c, showing first a vertically downward grinding movement followed by an inclined movement (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); ¶¶ 0059-0064). 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, in such a manner that 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, 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 is performed where first the inclined surface C1 is first contacted (Fig. 11), and then vertically downward to contact the first thin plate portion (Fig. 12, surface B1), leaving a remaining section of the inclined surface C1, resulting in the recited wafer grinding pattern). 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). 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.”). 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. Claim 1 is rejected. Specification – The objection to the abstract is withdrawn in view of Applicant’s amendments. Claims – The objections to claim 1 are withdrawn in view of Applicant’s amendments. In light of Applicant’s claim amendments, the § 112(b) rejection is hereby withdrawn. Response to Arguments Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments. Conclusion The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: JP 6671246 B2 (“Nishihara3”) discloses a workpiece grinding method (Figs. 1-11); JP 201154808 A (“Suzuki”) discloses a workpiece grinding method (Figs. 1-12). Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action. 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866)217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800)786-9199 (IN USA OR CANADA) or (571)272-1000. /KENT N SHUM/Examiner, Art Unit 3723 /MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
Read full office action

Prosecution Timeline

May 30, 2023
Application Filed
Oct 04, 2025
Non-Final Rejection — §103
Dec 23, 2025
Interview Requested
Jan 27, 2026
Response Filed
Jan 27, 2026
Examiner Interview Summary
Jan 27, 2026
Applicant Interview (Telephonic)
Mar 13, 2026
Final Rejection — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
27%
Grant Probability
65%
With Interview (+38.0%)
3y 4m
Median Time to Grant
Moderate
PTA Risk
Based on 95 resolved cases by this examiner. Grant probability derived from career allow rate.

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