Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 7-9, 11, 14, 16-18, and 20 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 applicant regards as the invention.
Claims 7 and 16 each recite a peripheral surface of the cleaning tool is configured in the shape of a brush. It is unclear what a brush-shape is. For purposes of examination, an annular tool will read on brush-shape since Applicant’s disclosure teaches the cleaning tool being annular.
Claim 8 recites the processing mark. There is insufficient antecedent basis for this limitation.
Claim 9 recites the cleaning tool has a thickness. It is unclear if the thickness is referring to the thickness introduced in claim 1, or if a second thickness is being introduced.
Claim 11 recites a processed region. It is unclear if this is referring to the processed region introduced in claim 1, or if another processed region is being introduced.
Claim 14 recites the cleaning tool has a thickness smaller than a thickness of the annular cutting blade. It is unclear if the thicknesses are referring to the thicknesses introduced in claim 12, or if second thicknesses are being introduced.
Claim 17 recites the processing mark. There is insufficient antecedent basis for this limitation.
Claim 18 recites the cleaning tool has a thickness. It is unclear if the thickness is referring to the thickness introduced in claim 12, or if a second thickness is being introduced.
Claim 20 recites a processed region. It is unclear if this is referring to the processed region introduced in claim 12, or if another processed region is being introduced.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation of claim 14 is a duplicate of a limitation in claim 12. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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(a) 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, 5, 8-14, and 17-20 rejected under 35 U.S.C. 103 as being unpatentable over JP-2019106437-A (“Kenta”) in view of JP-2015126022-A (“Misaizu”) and USPGPub No. 2022/0040878 (“Terada”).
Regarding claim 1, Kenta teaches a cutting apparatus (fig. 1, ¶ [0001] & [0017], wherein all references to the Kenta specification refer to the machine translation submitted herewith), comprising: at least one spindle (22/62); an annular cutting blade (21) which is configured to be mounted to the at least one spindle (fig. 2, ¶ [0019] & [0029]); and a cleaning tool (61) which is configured to be mounted to the at least one spindle (fig. 2, ¶ [0032]-[0033]), and which is used to remove swarf from a processed region of a workpiece that has been generated during processing of the workpiece by use of the cutting blade (¶ [0002]-[0005], [0052] & [0055]), the cleaning tool does not contain abrasive grains (one of skill in the art will reasonably infer that the cleaning blade does not have abrasive grains since it is configured to clean—not cut, and is not configured to contact the workpiece), and the cleaning tool has a thickness smaller than a thickness of the cutting blade (¶ [0052]).
Kenta fails to explicitly teach the cutting blade containing abrasive grains, and the cleaning tool is formed from an elastic material having a Vickers hardness of less than 10.6 GPa. However, this would have been obvious in view of Misaizu.
Misaizu is also directed to cutting semiconductors (fig. 2, ¶ [0001] & [0025]-[0026]), wherein all references to the Misaizu specification refer to the machine translation submitted with the Office action mailed on February 4, 2026). Misaizu teaches the cutting blade having abrasive grains therein such as diamond and CBN (¶ [0023]). Subsequently, a deburring/cleaning blade is used that is made out of a softer material such as silicone rubber, urethane, sponge or the like (fig. 3, ¶ [0030]-[0031]).
In this case, each of Kenta and Misaizu are directed to cutting and then cleaning a semiconductor with circular rotating blades/cleaning tools. One of skill in the art appreciates that that the cleaning tool should be much softer than the workpiece/cutting tool so that if the cleaning tool of Kenta accidently contacts the workpiece it will not remove material from the workpiece or damage it. One of skill in the art also appreciates that cutting tools with abrasive grains are generally well known. Misaizu teaches one of skill in the art that it is predictable to cut semiconductors with cutting tools having abrasive grains, and it is predictable to clean the cut lines with relatively soft blades such as silicone rubber or urethane. Thus, it would be obvious for the cutting blade of Kenta to have abrasive grains, and in order to not damage the workpiece or the cleaning tool, it would be obvious for the cleaning tool to be formed out of an elastic material softer than the cutting blade and the workpiece, such as silicone rubber or urethane.
The examiner notes that both silicone rubber and urethane have a Vickers hardness of less than 10.6 GPa.
Kenta fails to explicitly teach the cutting blade being annular, and the cleaning tool is formed in an annular shape such that the cleaning tool has in its central part an opening to be used at a time of mounting to the at least one spindle. However, this would have been obvious in view of Terada.
Terada is also directed to a device for cutting semiconductor wafers comprising a spindle configured to have an annular cutting blade or other element mounted thereto (fig. 3, ¶ [0001]-[0002], [0048] & [0066]). Terada teaches the annular cutting blade 52 being removably mounted to the spindle via mounts and a screw, wherein the central opening of the blade is used when mounting the blade to the spindle by inserting boss part 46 into the opening (fig. 2-3, ¶ [0064]-[0074]).
In this case, each of Kenta and Terada are directed to a device for cutting semiconductor wafers comprising a spindle configured to have an circular cutting blade or other circular element mounted thereto. Terada teaches that it is known and predictable to attach annular inserts in a removable manner via mounts and screws by inserting a boss into the central opening of the annular blade. This design also allows blades to be removed which will allow inserts to be replaced after they are worn down and reached the end of their useful life. Thus, in order to replace worn down annular inserts/blades, it would be obvious to modify Kenta et al. so that the cutting blade and cleaning tool are annular and are removably mounted on their respective spindles as taught by Terada.
Regarding claim 12, all the limitations are found in claim 1 except for the elastic material of the cleaning tool being softer than the workpiece. Kenta teaches the workpiece can be made out of materials harder than the silicone rubber/urethane cleaning tool, such as SiC, GaAs, and sapphire (¶ [0013]).
Claims 5 and 13 each recite the cleaning tool has a solid structure and is not porous. As detailed in the rejection to claim 1 above, the cleaning tool can be silicone rubber. Since the silicone rubber is mounted on a spindle, one of skill in the art will reasonably infer that it is a cured silicone rubber—cured silicone rubber being solid and nonporous.
Regarding claims 8 and 17, Kenta further teaches the cleaning tool is configured to be inserted into the processing mark formed in the processed region by the cutting blade (fig. 6, ¶ [0053]-[0056]).
Regarding claims 9 and 18, Kenta further teaches the cleaning tool has a thickness smaller than a width of a processing mark formed in the processed region by the cutting blade (fig. 6, ¶ [0055]).
Regarding claims 10 and 19, Kenta further teaches at least one nozzle configured to supply liquid to the cutting blade and to supply liquid to the cleaning tool (fig. 2, ¶ [0030] & [0034]).
Claims 11 and 20 recite the cleaning tool is positioned such that the cleaning tool is aligned with the cutting blade along a scheduled processing line of the workpiece, and wherein the cutting apparatus is configured to move the cleaning tool along the scheduled processing line corresponding to a processed region formed by the cutting blade. Since the claim is directed to an apparatus and not a method, the apparatus of Kenta et al. merely has to be capable of performing this intended use. Since Kenta teaches to simultaneously cut a workpiece along a scheduled processing line and clean the workpiece with the cleaning tool along the processing line (see figs. 1-2 & [0053]-[0054]), the apparatus of Kenta is at least capable of performing this intended use. Figure 2 of Kenta also shows the cutting blade and cleaning tool aligned in the Y-direction.
Claim 14 recites a duplicate limitation found in claim 12. Thus, Kenta et al. teaches claim 14.
Claims 1, 5, 8, 12-14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Misaizu in view of Terada.
Regarding claim 1, MIsaizu teaches a cutting apparatus (fig. 2, ¶ [0001] & [0025]-[0026]), comprising: at least one spindle (10/16); an annular cutting blade (12) which is configured to be mounted to the at least one spindle (fig. 2, ¶ [0022]); and a cleaning tool (18) which is configured to be mounted to the at least one spindle (fig. 2, ¶ [0031]), and which is used to remove swarf from a processed region of a workpiece that has been generated during processing of the workpiece by use of the cutting blade (fig. 3, ¶ [0032], wherein swarf sticking out of the cut and/or on the edge can be removed, and wherein the elastic nature of the cleaning tool allows it to be deformed so that it is capable of being inserted at least partially into the cut region), the cleaning tool is formed in an annular shape from an elastic material having a Vickers hardness of less than 10.6 GPa and does not contain abrasive grains (see ¶ [0031], one of skill in the art will reasonably infer that the cleaning blade does not have abrasive grains since it is made out of a relatively soft elastic material so that is not configured to cut).
Misaizu fails to explicitly teach the cleaning tool has in its central part an opening to be used at a time of mounting to the at least one spindle. However, this would have been obvious in view of Terada.
Terada is also directed to a device for cutting semiconductor wafers comprising a spindle configured to have an annular cutting blade or other element mounted thereto (fig. 3, ¶ [0001]-[0002], [0048] & [0066]). Terada teaches the annular cutting blade 52 being removably mounted to the spindle via mounts and a screw, wherein the central opening of the blade is used when mounting the blade to the spindle by inserting boss part 46 into the opening (fig. 2-3, ¶ [0064]-[0074]).
In this case, each of Misaizu and Terada are directed to a device for cutting semiconductor wafers comprising a spindle configured to have an annular cutting blade or other annular element mounted thereto. Terada teaches that it is known and predictable to attach annular inserts in a removable manner via mounts and screws by inserting a boss into the central opening of the annular blade. This design also allows blades to be removed which will allow inserts to be replaced after they are worn down and reached the end of their useful life. Thus, in order to replace worn down annular inserts/blades, it would be obvious to modify Misaizu so that the annular cutting blade and cleaning tool and are removably mounted on their respective spindles as taught by Terada.
Misaizu fails to explicitly teach the cleaning tool has a thickness smaller than a thickness of the cutting blade. However, this would also be obvious in view of Terada.
Terada teaches that the spindles can have different annular blade designs mounted thereon. For example, the cutting blade can be a washer-type blade 52 having a substantially constant thickness (fig. 3, ¶ [0066]), or, can be a hub-type cutting blade 36 having a thicker central portion 38 that is held by the mounting means (fig. 2, ¶ [0062]). Thus, in order to provide a thicker and stronger portion to be held by the mounting means, it would be obvious to modify the cutting blade so that it is a hub-type blade as taught by Terada.
Given the above modification, a thickness at at least the outer circumference of the cleaning tool is less than a thickness at the central hub portion of the cutting tool since one of skill in the art will reasonably infer that the central hub part is more than 5-30 micrometers thicker than the outer circumference of the cutting blade. In the alternative, it would be an obvious design choice for the central hub part to be more than 5-30 micrometers thicker than the outer circumference of the cutting blade in order to provide a thicker and stronger portion to be held by the mounting means.
Regarding claim 12, all the limitations are found in claim 1 except for the elastic material of the cleaning tool being softer than the workpiece. Misaizu teaches the workpiece can be made out of materials harder than the silicone rubber/urethane cleaning tool, such as metals (¶ [0001]-[0002] & [0029]).
Claims 5 and 13 each recite the cleaning tool has a solid structure and is not porous. As detailed in the rejection to claim 1 above, the cleaning tool can be silicone rubber. Since the silicone rubber is mounted on a spindle, one of skill in the art will reasonably infer that it is a cured silicone rubber—cured silicone rubber being solid and nonporous.
Claims 8 and 17 each recite the cleaning tool is configured to be inserted into the processing mark formed in the processed region by the cutting blade. Given the properties of elastic materials such as silicone rubber and urethane (¶ [0031] of Misaizu), one of skill in the art appreciates that the cleaning tool is capable of deforming so that it is inserted into the processing mark formed by the thinner cutting blade.
Claim 14 recites a duplicate limitation found in claim 12. Thus, Misaizu et al. teaches claim 14.
Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Misaizu et al. as applied to claim 1 or 12 above, and further in view of Kenta.
Regarding claims 10 and 19, Misaizu et al. fail to explicitly teach at least one nozzle configured to supply liquid to the cutting blade and to supply liquid to the cleaning tool. However, this would be obvious in view of Kenta.
Kenta is also directed to cutting semiconductors with a circular blade (figs. 1-2, ¶ [0013]-[0014] & [0029]). Kenta teaches nozzles for spraying cutting fluid to the cutting blade during cutting (fig. 2, ¶ [0030]).
In this case, each of Misaizu and Kenta are directed to cutting semiconductors with a circular blade. Kenta teaches that it is known to supply nozzle for spraying cutting fluid to the cutting blade. One of skill in the art appreciates that cutting fluid can reduce heat and friction during cutting. Thus, it would be obvious to modify MIsaizu to provide nozzles confiugeed to supply cutting liquid to the cutting blade during cutting.
Given the above modification, since the cleaning tool follows the same path as the cutting blade, the nozzles are also capable of supplying liquid to the cleaning tool.
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Misaizu et al. as applied to claim 1 or 12 above, and further in view of JP-2010023161-A (“Kiyoshi”).
Regarding claims 6 and 15, Misaizu et al. fail to explicitly teach a peripheral surface of the cleaning tool includes at least one slit. However, this would have been obvious in view of Kiyoshi.
Kiyohsi is also directed to a finishing wheel (Title, ¶ [0001], wherein grinding is a type of finishing process that removes a small amount of material, and wherein all references to the Kiyoshi specification refer to the machine translation submitted herewith). Kiyoshi teaches the grinding wheel comprising a plurality of slits to prevent clogging between the wheel and the workpiece, thereby preventing abnormal heat accumulation and extending the life of the tool (¶ [0004], [0006] & [0012]).
In this case, each of Misaizu et al. Kiyoshi and are directed to a wheel for finishing a workpiece by removing material from a workpiece (see ¶ [0030]-[0031] of Misaizu which teaches deburring/finishing the workpiece; see Title & ¶ [0001] of Kiyoshi wherein grinding is a type of finishing process that removes small amounts of material). Kiyoshi teaches one of skill in the art that providing slits on the outer peripheral surface of the wheel can increase the life of the wheel by preventing material from clogging/getting trapped between the wheel and the workpiece. Thus, in order to prevent burrs and other material from getting trapped between the cleaning wheel and the workpiece, it would be obvious to provide a plurality of slits on the deburring/cleaning wheel of Misaizu.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Misaizu et al. as applied to claim 1 or 12 above, and further in view of USPGPub No. 2003/0045213 (“Keipert”).
Regarding claims 7 and 16, Misaizu et al. fail to explicitly teach a peripheral surface of the cleaning tool is configured in the shape of a brush in which a fibrous material is embedded. The examiner notes that the embedded fibrous material (which seems to be an abrasive material) is being interpreted differently than an abrasive grain as recited in claims 1 and 12 (wherein the fibers are interpreted as elongated/filamentary and flexible elements, while abrasive grains are interpreted as sharp and hard individual particles). However, this would be obvious in view of Keipert.
Keipert is also directed to a wheel for deburring (fig. 1, ¶ [0125]-[0126]). Keipert teaches that it is known for such wheels to be abrasive by having embedded fibers therein (fig. 1, ¶ [0015], [0049] & [0081]-[0082], i.e. the abrasive particles are filamentary shaped).
In this case, Misaizu et al. teaches a wheel to deburr a workpiece (see ¶ [0030]-[0031] of Misaizu). One of skill in the art that wheels of different designs/structures can be used to deburr a workpiece. Keipert teaches that it is known to use abrasive particles in finishing/deburring wheels, wherein the abrasive particles are fibrous, i.e. filamentary, and are embedded in the wheel. One of skill in the art appreciates that abrasive materials can help removed material from a workpiece. Thus, to better deburr/finish a workpiece, it would be obvious to modify the cleaning/deburring tool of Misaizu so that it has abrasive fibrous material embedded therein.
Response to Arguments
Applicant's arguments filed May 1, 2026 (“the remarks”) have been fully considered. The examiner agrees that the claim amendments overcome the previous rejections, thus the previous rejections are withdrawn. The examiner notes that one of the above rejections is also Misaizu in view of Terada. An additional modification was needed that was not present in the previous rejection over Misaizu in view of Terada.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
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