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and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114.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 02/12/2026 has been entered.
Information Disclosure Statement
The information disclosure statement filed on 02/12/2026 fails to comply with 37 C.F.R. § 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Only a translation has been filed. It has been placed in the application file, but the information referred to therein has not been considered.
Specification
The abstract of the disclosure is objected to because the last sentence refers to purported merits of the invention. Correction is required. MPEP § 608.01(b). No new matter should be entered.
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.
Kato in view of Nemoto and Lizotte
Claims 1-5 are rejected under 35 U.S.C. § 103 as being unpatentable over US 6358117 B1 (“Kato”) in view of US 20080268752 A1 (“Nemoto”) and US 4123878 A (“Lizotte”).
Kato pertains to a method for grinding a wafer (Abstr.; Fig. 1). Nemoto pertains to a substrate grinding method (Abstr.; Fig. 2). Lizotte pertains to a method and apparatus for grinding a workpiece (Abstr.; Figs. 1-6). These references are in the same field of endeavor.
Regarding claim 1, Kato discloses a workpiece grinding method for grinding a workpiece by a grinding apparatus including a chuck table rotatable with a straight line passing through a center of a holding surface as a rotational axis, a spindle that has a tip part to which [a]...grinding wheel...is mounted, and a moving mechanism capable of adjusting a spacing between the chuck table and the grinding wheel (Fig. 1; 4:1-5:7, apparatus 12 grinds workpiece W on chuck table 16 rotatable about axis 20a (at center of holding surface of element 16), spindle 24 has a tip part (bottom of spindle 24) attached to a grinding wheel 14/22, the spacing of the chuck table 16 and grinding wheel 14/22 is capable of being adjusted by a moving mechanism (4:1-5:7, “moving mechanism” is inherently disclosed) that moves grinding wheel 14/22 and/or chuck table 16 up and down; Examiner notes that the limitation “a moving mechanism capable of adjusting a spacing between the chuck table and the grinding wheel” does not invoke interpretation under § 112(f) as the term has an ordinary and customary meaning to person of ordinary skill in the art and denotes the type of structural device that includes motors and actuators and/or gearing and transmission components, and there is no express intent in the specification to disavow the full scope of the plain meaning of this limitation; see discussion below re “a moving mechanism”),
the workpiece grinding method comprising:
a holding step of holding the workpiece on the holding surface of the chuck table (Fig. 1; 4:18-24, 4:53-55, vacuum suction mechanism holds workpiece W on the top surface of chuck table 16);
and a grinding step of operating the moving mechanism such that the plurality of grindstones and the workpiece are brought into contact with each other while rotating both the chuck table and the spindle, to thereby grind the workpiece, after the holding step (Fig. 1; 4:25-29, “The tables 14 and 16, one on the other, are rotated and at least one table is pressed on the other table, moving in a vertical direction, whereby a surface of the wafer (W) that is fixed on the upper surface of the lower table 16 is ground.”; 4:56-63),
wherein the grinding step includes
an approaching step of operating the moving mechanism to cause the chuck table and the grinding wheel to approach each other such that the workpiece is ground in a state in which the chuck table and the grinding wheel press each other through the workpiece (Fig. 1; 4:25-29, “The tables 14 and 16, one on the other, are rotated and at least one table is pressed on the other table, moving in a vertical direction, whereby a surface of the wafer (W) that is fixed on the upper surface of the lower table 16 is ground.”; 4:56-63),
a spacing step of operating the moving mechanism to move the grinding wheel away from the chuck table in a direction along an axis of the spindle to reduce a grinding load exerted on the chuck table and the grinding wheel, while the plurality of grindstones and the workpiece remain contact with each other, after the approaching step (Fig. 1; 4:1-5:7, grinding wheel 14/22 is slowly moved vertically upward along the spindle axis (axis of spindle 24), performing the recited function for at least a moment in time; 6:10-47, “As a result, when the ascending speed (returning speed) is set to a low speed, results similar to the experiments in which a rotation number of a wafer in the spark-out was changed were obtained...The reason why is considered to be that, since a grinding stone in use is a resinoid grinding stone (resin #2000), the grinding stone itself is in a compressed state to some extent during grinding due to its elasticity and, when an ascending speed (a returning speed) of the grinding stone is slow in escape, grinding striations are produced at a pitch corresponding to a rotation number of a wafer in the escape since the grinding stone is kept in contact with the wafer for a time before separation. In this case, it is required that an ascending speed (a returning speed) of a grinding stone is adjusted to be slow enough for the grinding stone and the wafer to be kept in contact with each other at least for one rotation of the wafer and the ascending speed is considered to change depending to an elasticity of the grinding stone.”; see discussion below re “plurality of grindstones”),
and a stopping step of stopping the operation of the moving mechanism in the direction along the axis of the spindle while the plurality of grindstones and the workpiece remain in contact with each other such that the workpiece is ground while the grinding load is reduced... (Fig. 1; 4:64-67, “The downward movement of the grinding stone 22 is ceased when the wafer (W) is ground off by 10 μm, while the grinding stone 20 and the wafer (W) continues to rotate as they are, which state is referred to as spark-out.”, the grinding load is gradually reduced during the spark-out grinding process; see discussion below re “plurality of grindstones”).
Kato does not explicitly disclose:
a spindle that has a tip part to which an annular grinding wheel having a plurality of grindstones arranged thereon in a state of being dispersed in an annular pattern is mounted,
and a moving mechanism capable of adjusting a spacing between the chuck table and the grinding wheel,
and a stopping step of stopping the operation of the moving mechanism in the direction along the axis of the spindle while the plurality of grindstones and the workpiece remain in contact with each other such that the workpiece is ground while the grinding load is reduced, after the spacing step.
However, the Kato/Nemoto/Lizotte combination makes obvious this claim.
Nemoto discloses:
a spindle that has a tip part to which an annular grinding wheel having a plurality of grindstones arranged thereon in a state of being dispersed in an annular pattern is mounted (Figs. 3A-B, 4, 5A-C, spindle 31 with shaft 32 having a tip part (bottom of shaft 32) that is attached to an annular grinding wheel 35 with a plurality of grindstones 37 arranged in an annular pattern),
and a moving mechanism capable of adjusting a spacing between the chuck table and the grinding wheel (Fig. 2; ¶ 0030, moving mechanism including motor 42 and feeding mechanism 43 is capable of adjusting the spacing between the chuck table 20 and grinding wheel 35).
Lizotte discloses:
an approaching step of operating the moving mechanism to cause the chuck table and the grinding wheel to approach each other such that the workpiece is ground in a state in which the chuck table and the grinding wheel press each other through the workpiece (Fig. 6; 6:66-8:38, approaching step from point N to O, workpiece is ground by the grinding wheel (see “FORCE” chart of Fig. 6)),
a spacing step of operating the moving mechanism to move the grinding wheel away from the chuck table...to reduce a grinding load exerted on the chuck table and the grinding wheel, while the plurality of grindstones and the workpiece remain contact with each other, after the approaching step (Fig. 6; 6:66-8:38, spacing step from point O to point P, reducing the grinding load while maintaining contact between the grinding wheel and workpiece (see “FORCE” chart of Fig. 6 showing there remains some force at point O to point P, which represents the recited contact)),
and a stopping step of stopping the operation of the moving mechanism...while the plurality of grindstones and the workpiece remain in contact with each other such that the workpiece is ground while the grinding load is reduced, after the spacing step (Fig. 6; 6:66-8:38, stopping step from point P to point Q, and further grinding the workpiece in this “sparkout” period (see “FORCE” chart of Fig. 6 showing there is a lowering force from point P to point Q, which represents the recited contact and reduced load)).
Regarding the annular grinding wheel and the “moving mechanism”, 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 Nemoto with Kato to substitute in the Nemoto annular grinding wheel and motor/feeding mechanism, replacing those of Kato. Kato does not describe the exact type of grinding wheel (e.g., it could be a flat disk or an annular grinding wheel) or the “moving mechanism” (but Kato describes the recited functions attributed to a “moving mechanism”). Nevertheless, the use of different grinding wheels including an annular grinding wheel and the use of different moving mechanisms including a motor/feeding mechanism are well-known and the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
Regarding the “stopping step” limitation being “after the spacing step”, 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 Lizotte with the Kato/Nemoto combination to put the spark-out step (i.e., where vertical movement of the spindle is stopped) after the spacing step (Kato discloses a single spark-out step prior to a spacing step (Kato 4:51-5:7, 6:10-47)). This would have been obvious to a person of ordinary skill in the art because Kato teaches that the grinding stone may be in a compressed state (when grinding a workpiece) and would continue to contact the workpiece and grind the workpiece even when the grinding stone is lifted away from the workpiece due to the elasticity of the grinding stone (Kato 6:10-47; see Lizotte 7:59-66, 7:21-26, “retraction of the wheelhead...to relieve the deflection in the spindle”). And like Kato, Lizotte teaches a spacing step as claimed, but also teaches a stopping (“sparkout”) step after the spacing step (when the grinding load is reduced to a low grinding load). A person of ordinary skill in the art would recognize that the combination of a spacing step followed by a stopping (“sparkout”) step would result in a final, finishing grinding operation on the workpiece performed after the grinding force exerted by the grinding stone onto the workpiece (and/or any other compression/deflection in the grinding system and/or workpiece) is at least partially relieved; and this would produce a product with fewer grinding striations (Kato 6:10-47) and would further assist in relieving any residual stress on the wafer, thereby increasing product finish quality and higher yields (i.e., fewer dies on the wafers failing quality or operational standards) (Lizotte 1:63-2:49, “It has been found, furthermore, that the best surface finish is obtained when the finish grinding takes place with an appreciable force between the wheel and workpiece...Such an appreciable force is, however, substantially less than the amount used in ‘controlled force’ grinding where the force used is as high as is feasible without destruction of the wheel.”; Lizotte 7:59-8:1, “the low-force cutting during this ‘finish’ portion of the cycle has caused a smaller deflection of the spindle 18. After the retraction takes place, the wheel is allowed to ‘sparkout’ and to grind the workpiece to the point Q which is the final size point.”; see JP 2021109247 A (“Asai”) Figs. 3-4; ¶ 0039, spindle is raised from maximum grinding depth Z3 to Z4 (in consideration of “spring back”), and then stopped at depth Z4 for a time to perform sparkout grinding, resulting in “high thickness accuracy”; ¶¶ 0033-0036).
Regarding claim 2, the Kato/Nemoto/Lizotte combination makes obvious the workpiece grinding method of claim 1 as applied above. Kato further discloses wherein the approaching step includes a first period in which a grinding feed speed of the grinding wheel exceeds a reducing speed of the thickness of the workpiece, and a second period in which the grinding feed speed of the grinding wheel is equal to the reducing speed of the thickness of the workpiece (Kato 4:51-5:7, 6:10-47, Kato discloses that the grinding stone is moved towards the workpiece and that the grinding stone is compressed during a grinding operation; thus, this limitation is met because this at least inherently discloses a first period as claimed (when the grinding stone is being compressed when it first contacts the workpiece) and a second period as claimed (when the grinding stone is no longer compressible and only moves downward as material is removed from the workpiece).
Regarding claim 3, the Kato/Nemoto/Lizotte combination makes obvious the workpiece grinding method of claim 2 as applied above. Kato further discloses wherein a grinding load increases during the first period, and the grinding load remains constant during the second period (Kato 4:51-5:7, 6:10-47, as discussed in claim 2, Kato discloses the first and second periods as claimed; and due to the compressibility of the grinding stone, during the first period, the grinding load would increase as the grinding stone is compressed, until it is no longer compressible (during the second period) at which point the grinding load would remain constant; see Lizotte Fig. 6, the grinding load (“FORCE”) is constant between grinding points N and O (second period), demonstrating a typical grinding operation after the grinding stone and/or system is fully compressed; the short duration immediately after point N (first period) is illustrative of a typical increasing grinding load due to the grinding stone and/or system being compressed).
Regarding claim 4, the Kato/Nemoto/Lizotte combination makes obvious the workpiece grinding method of claim 3 as applied above. Kato further discloses wherein, in the spacing step, the grinding wheel is moved away from the chuck table after the second period (Kato 4:51-5:7, 6:10-47, as discussed in claim 2, Kato discloses the second period as claimed, the spacing step involves the grinding wheel being moved away from the chuck table and occurs after the second period).
Regarding claim 5, the Kato/Nemoto/Lizotte combination makes obvious the workpiece grinding method of claim 2 as applied above. Kato further discloses a completing step of operating the moving mechanism to move the grinding wheel away from the chuck table to separate the grinding wheel from the workpiece, after the stopping step (Kato 4:51-5:7, 6:10-47, the completing step involves separating the grinding wheel from the workpiece, and occurs after the stopping step; Examiner notes that this step would be after the “sparkout” step, as modified by Lizotte).
Response to Amendment
Applicant’s Amendment and remarks have been considered.
Specification – The objection to the abstract is sustained; Applicant failed to address this objection in the 12/22/2025 Office Action.
Claims – Claims 1-5 are pending. Claims 1-5 are rejected.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Regarding claim 1, Lizotte is relied upon for its teachings regarding the approaching step, spacing step, and the stopping step subsequent to the spacing step (Lizotte Fig. 6, points N-Q). The fact that Lizotte’s grinding device is arranged such that its spindle is transverse to the workpiece grinding surface is of no consequence to the obviousness of the proposed combination. As discussed in the rejection of claim 1 above, Lizotte teaches that a sparkout grinding performed (where the spacing between the grinding tool and workpiece is constant) after a spacing step (to relieve some of the grinding force exerted upon the workpiece) would result in a superior finish (Lizotte 1:63-2:49, “It has been found, furthermore, that the best surface finish is obtained when the finish grinding takes place with an appreciable force between the wheel and workpiece...Such an appreciable force is, however, substantially less than the amount used in ‘controlled force’ grinding where the force used is as high as is feasible without destruction of the wheel.”). A person of ordinary skill in the art would recognize that this Lizotte teaching would apply to essentially all automated grinding devices, regardless of relative orientation between a grinding tool spindle and workpiece surface. Thus, it would have been obvious for a person of ordinary skill in the art to apply these teachings outlined in Lizotte to the Kato/Nemoto combination whether the grinding device is arranged such that the spindle is parallel to, transverse to, or in another alignment with, the workpiece surface.
Applicant does not present any further arguments concerning the remaining claims.
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: July 25, 2026Examiner, Art Unit 3723
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