Prosecution Insights
Last updated: April 19, 2026
Application No. 18/363,939

WORKPIECE PROCESSING METHOD

Non-Final OA §103§112
Filed
Aug 02, 2023
Examiner
CHANG, SUKWOO JAMES
Art Unit
3723
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Disco Corporation
OA Round
1 (Non-Final)
57%
Grant Probability
Moderate
1-2
OA Rounds
2y 9m
To Grant
98%
With Interview

Examiner Intelligence

Grants 57% of resolved cases
57%
Career Allow Rate
59 granted / 104 resolved
-13.3% vs TC avg
Strong +41% interview lift
Without
With
+41.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
74 currently pending
Career history
178
Total Applications
across all art units

Statute-Specific Performance

§101
2.2%
-37.8% vs TC avg
§103
53.3%
+13.3% vs TC avg
§102
18.5%
-21.5% vs TC avg
§112
22.8%
-17.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 104 resolved cases

Office Action

§103 §112
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 . Information Disclosure Statement The information disclosure statement (IDS) submitted on 08/02/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Drawings The drawings submitted on 08/02/2023 are being considered by the examiner. 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. 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 1-15 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 1, lines 12-14, the phrase “bringing a rotating first grinding wheel closer to the chuck table, while rotating the chuck table, such that the protective member is pressed and embedded …” renders claim vague and indefinite. First, bringing the rotating first grinding wheel closer to the chuck table does not provide information from where to where the first grinding wheel moves. Next, it is not clearly defined which component presses the protective member. The first grinding wheel is brought near to the check table, but the first grinding wheel does not have to press the protective member. For examination purpose the examiner has interpreted any device can press the protective member for the embedding step. It does not have to be a rotating device. In claim 1, lines 19-21, the phrase “bringing a rotating second grinding wheel closer to the chuck table, while rotating the chuck table, such that the protective member is ground …” renders claim vague and indefinite. As discussed similarly above, bringing the rotating second grinding wheel closer to the chuck table does not provide information from where to where the second grinding wheel moves. In addition, the protective member does not have be ground by the second grinding wheel. However, because the grinding is needed, examiner has interpreted a grinding tool grinds the protective member. Claims 2-14 inherit the above deficiency by nature of their dependency. In claim 15, lines 12-14, the phrase “bringing a rotating grinding wheel closer to the chuck table, while rotating the chuck table, such that the protective member is pressed and ground …” renders claim vague and indefinite. As discussed similarly above, bringing the rotating grinding wheel closer to the chuck table does not provide information from where to where the grinding wheel moves. In addition, the protective member does not have be pressed and ground by the grinding wheel. However, because the grinding is needed, examiner has interpreted a grinding tool grinds the protective member. Claim Rejections - 35 USC § 103 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. Claims 1, 2, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mihara (US 2019/0111536, hereinafter Mihara), in view of Priewasser (CN 108933098A), Gao (CN 114029812A), and Cheng et al. (US 2014/0057052, hereinafter Cheng). Regarding claim 1, Mihara discloses a workpiece processing method for a workpiece including a substrate whose front surface is in an uneven shape with recesses and projections attributable to formation of a plurality of devices on the front surface side of the substrate (fig. 1 and ¶ 0022, a workpiece W includes a plurality of devices D formed on a front surface Wa. The plurality of devices D forms an uneven shape with recesses and projections on the front surface of a substrate), and a protective member which adheres to each of the plurality of devices serving as the projections on the front surface side of the substrate (fig. 1 and ¶ 0024, a workpiece protective member 1 covers each of the devices D in order to protect each of the devices D), but does not disclose the method comprising a holding step of holding a back surface side of the substrate on a chuck table; and an embedding step of, after the holding step, bringing a tool closer to the chuck table, and the protective member is pressed and embedded in boundaries of adjacent ones of the plurality of devices serving as the recesses on the front surface side of the substrate. Priewasser teaches, in an analogous workpiece processing field of endeavor, the method comprising a holding step of holding a back surface side of the substrate on a chuck table (fig. 9 and Priewasser English translation, p. 28:27-31, a back surface side of wafer W is held on a chuck table 20); and an embedding step of, after the holding step, bringing a tool closer to the chuck table, and the protective member is pressed and embedded in boundaries of adjacent ones of the plurality of devices serving as the recesses on the front surface side of the substrate (fig. 9 and Priewasser English translation, p. 28:32-29:10, a rubber film 52 moves downward and presses a protective film 4, thus the protective film 4 can be closely applied to a front side of the wafer to comply with device region profile). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara to provide the pressing tool as taught by Priewasser so that the devices on the wafer is protected. Examiner notes that as discussed in 112(b) rejection above, the recited first grinding wheel does not have to be used for pressing the protective member. Nevertheless, Mihara as modified by Priewasser does not disclose the pressing tool is a rotating first grinding wheel. Gao teaches, in an analogous workpiece processing field of endeavor, the pressing tool is a rotating first grinding wheel (Gao English translation, p. 5:22-28, a protective film is embedded on a surface of a silicon sheet wherein a rotating pressing plate presses the protective film onto the surface of the silicone sheet which is disposed on a conveying device). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser to provide the rotating wheel as taught by Gao in order to stick the protective film to the workpiece completely. Mihara as modified by Priewasser and Gao teaches the chuck table rotates while pressing the protective member. Mihara teaches, in fig. 5, rotating the chuck table 20 during processing the workpiece 4. The chuck table of Mihara can be combined with the embedding method of Gao to replace the conveying device with the rotating chuck table during the pressing process. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser and Gao to provide the rotating chuck table during the embedding step in order to apply pressure evenly so that the protective member covers the workpiece uniformly. Mihara as modified by Priewasser and Gao still does not disclose a planarization step of, after the embedding step, bringing a rotating second grinding wheel closer to the chuck table, and the protective member is ground and the front surface side of the protective member is planarized. Cheng teaches, in an analogous workpiece processing field of endeavor, a planarization step of, after the embedding step, bringing a rotating second grinding wheel closer to the chuck table, and the protective member is ground and the front surface side of the protective member is planarized (fig. 1(b) and ¶ 0026-27, a rotating grinding device 3 [corresponds to the recited rotating second griding wheel] moves close to a wafer 1 and grinds a protective layer 5 [corresponds to the protective member]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser and Gao to provide the planarization step as taught by Cheng in order to make a top surface of the workpiece smooth and even (Cheng ¶ 0032). Mihara as modified by Priewasser, Gao, and Cheng teaches the chuck table rotates while grinding the protective member. Mihara teaches, in fig. 5, rotating the chuck table 20 during processing the workpiece 4. The chuck table of Mihara can be combined with the planarization method of Cheng to provide the rotating chuck table during the grinding process. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, and Cheng to provide the rotating chuck table during the planarization step in order to enhance the grinding process by rotating the workpiece. Regarding claim 2, Mihara as modified by Priewasser, Gao, and Cheng teaches the workpiece processing method as in the rejection of claim 1, further comprising: a grinding step of, after the planarization step, grinding the back surface side of the substrate (fig. 5 and ¶ 0034, the workpiece embedded with the protective member 1 is held on a holding face 21 of the chuck table 20, and grinding means 30 grinds a back surface Wb of the workpiece W). Regarding claims 7 and 12, Mihara as modified by Priewasser, Gao, and Cheng teaches the workpiece processing method as in the rejection of claims 1 and 2 respectively, but does not disclose explicitly that the first grinding wheel and the second grinding wheel are a same grinding wheel. As discussed in the rejection of claim 1; however, Mihara as modified by Priewasser, Gao, and Cheng teaches the use of the first grinding wheel which presses the protective member and the second grinding wheel which grinds the protective member. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, and Cheng to utilize only one grinding wheel such as the grind device 3 of Cheng so that the workpiece processing device has less components and occupies less space. Claims 3, 4, 8, 9, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mihara in view of Priewasser, Gao, and Cheng, as applied to claims 1 and 2 above respectively, and in further view of Yamaguchi et al. (TW 202006858A, hereinafter Yamaguchi). Regarding claims 3 and 8, Mihara as modified by Priewasser, Gao, and Cheng teaches the workpiece processing method as in the rejection of claims 1 and 2 respectively, but does not disclose in the embedding step, liquid having a flow rate lower than a flow rate of liquid supplied to a contact interface between the protective member and the second grinding wheel in the planarization step is supplied to a contact interface between the protective member and the first grinding wheel. Yamaguchi teaches, in an analogous workpiece processing field of endeavor, in the embedding step, liquid having a flow rate lower than a flow rate of liquid supplied to a contact interface between the protective member and the second grinding wheel in the planarization step is supplied to a contact interface between the protective member and the first grinding wheel (Yamaguchi English translation, p. 24:14-17, a large flow rate of polishing process liquid is preferred for polishing at high speed. Yamaguchi does not present the embedding step and the planarization step of the protective member, however, it teaches a general information of the polishing liquid in the polishing process that the greater flow rate of the polishing liquid is needed for a high-speed polishing/grinding than a low-speed polishing/grinding. Here, the embedding step requires pressing the protective member, not grinding the protective member, but the planarization step requires grinding the protective member. Therefore, it is obvious that the second grinding wheel rotates higher speed than the first grinding wheel, and it would require lower liquid flow rate in the embedding step). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, and Cheng to provide the lower flow rate in the embedding step or the greater flow rate in the planarization step as taught by Yamaguchi so that the grinding surface maintains sufficient distribution of the processing liquid for effective grinding (Yamaguchi English translation, p. 24:15). Regarding claims 4 and 9, Mihara as modified by Priewasser, Gao, and Cheng teaches the workpiece processing method as in the rejection of claims 1 and 2 respectively, but does not disclose liquid having a higher temperature. Yamaguchi teaches, in an analogous workpiece processing field of endeavor, liquid having a higher temperature (Yamaguchi English translation, p. 10:22-26, a temperature control unit of a polishing/grinding processing device controls the temperature of slurry and/or chemical solution used in the polishing/grinding process). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, and Cheng to control the liquid temperature as taught by Yamaguchi in order to supply the polishing liquid having appropriate temperature for effective grinding procedure. Mihara as modified by Priewasser, Gao, Cheng, and Yamaguchi teaches in the embedding step, liquid having a temperature higher than liquid supplied to a contact interface between the protective member and the second grinding wheel in the planarization step is supplied to a contact interface between the protective member and the first grinding wheel (Priewasser English translation, p. 4:22-5:9, in the protective film application step, heating process is applied followed by cooling process. Thus, the higher temperature is applied in the embedding process, and the lower temperature is applied in the post-embedding step. Priewasser does not utilize high temperature liquid for the temperature control, but liquid temperature control method of Yamaguchi can be combined with the heating process of Priewasser to apply the higher temperature liquid in the embedding step and to apply the lower temperature liquid in the planarization step). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, Cheng, and Yamaguchi to provide the higher temperature in the embedding step than the planarization step because the high temperature allows the protective member to bond to the wafer better (Priewasser English translation, p. 4:28-32). Regarding claims 13 and 14, Mihara as modified by Priewasser, Gao, Cheng, and Yamaguchi teaches the workpiece processing method as in the rejection of claims 3 and 8 respectively, wherein, in the embedding step, liquid having a temperature higher than liquid supplied to a contact interface between the protective member and the second grinding wheel in the planarization step is supplied to a contact interface between the protective member and the first grinding wheel (Yamaguchi English translation, p. 10:22-26, Yamaguchi teaches a temperature control unit of a polishing/grinding processing device controls the temperature of slurry and/or chemical solution used in the polishing/grinding process; Priewasser English translation, p. 4:22-5:9, in the protective film application step, heating process is applied followed by cooling process. Thus, the higher temperature is applied in the embedding process, and the lower temperature is applied in the post-embedding step. Priewasser does not utilize high temperature liquid for the temperature control, but liquid temperature control method of Yamaguchi can be combined with the heating process of Priewasser to apply the higher temperature liquid in the embedding step and to apply the lower temperature liquid in the planarization step). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, Cheng, and Yamaguchi to provide the higher temperature in the embedding step than the planarization step because the high temperature allows the protective member to bond to the wafer better (Priewasser English translation, p. 4:28-32). Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Mihara in view of Priewasser, Gao, and Cheng, as applied to claims 1 and 2 above respectively, and in further view of Gusev et al. (RU 2606143C1, hereinafter Gusev). Regarding claims 5 and 10, Mihara as modified by Priewasser, Gao, and Cheng teaches the workpiece processing method as in the rejection of claims 1 and 2 respectively, but does not disclose the first grinding wheel includes grindstones having a lower concentration than that of grindstones included in the second grinding wheel. Gusev teaches, in an analogous workpiece processing field of endeavor, the first grinding wheel includes grindstones having a lower concentration than that of grindstones included in the second grinding wheel (Gusev English translation, p. 2:16-17, in a workpiece grinding method, a pre-grinding requires a lower concentration of abrasive grains than a final grinding. Gusev does not teach the protective member preparation, however, it is a general information that grinding requires a concentration of abrasives/grindstones for a good grinding outcome. Here, the embedding step is for pressing the protective member while the planarization step is for grinding the protective member. Therefore, the second grinding wheel used in the planarization step needs higher concentration of the grindstones). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, and Cheng to provide the first grinding wheel having the lower concentration grindstones as taught by Gusev because the greater concentration of abrasive results in better grinding of a workpiece. Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mihara in view of Priewasser, Gao, and Cheng, as applied to claims 1 and 2 above respectively, and in further view of Smyth et al. (US 2021/0308832, hereinafter Smyth). Regarding claims 6 and 11, Mihara as modified by Priewasser, Gao, and Cheng teaches the workpiece processing method as in the rejection of claims 1 and 2 respectively, but does not disclose the grindstones having different edge widths. Smyth teaches, in an analogous workpiece processing field of endeavor, the grindstones having different edge widths (¶ 0003, abrasive articles for grinding may have abrasives from very small to quite large sizes. Smyth does not teach the protective member preparation, but its teaching regarding the size of abrasives can be applicable to any grinding process). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, and Cheng to provide the grindstones having different edge widths as taught by Smyth in order to choose appropriate size of abrasives/grindstones for different steps of grinding. Mihara as modified by Priewasser, Gao, Cheng, and Smyth teaches the first grinding wheel includes grindstones each having an edge width smaller than that of each of grindstones included in the second grinding wheel. Specification of the instant application does not explain why the grindstones of the first grinding wheel have the smaller edge width than the grindstones of the second grinding wheel. In general, a bulk or main grinding is performed with large abrasives. Here, the embedding step does not perform grinding, thus it would not need a grindstone size requirement. The grindstone edge width of the first grinding wheel can be smaller than that of the second grinding wheel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser, Gao, Cheng, and Smyth to provide the second grinding wheel having the larger grindstones. Since the planarization step incudes grinding the protective member, the second grinding wheel requires grindstones/abrasives, and their size need to be larger than the grindstones of the first grinding wheel so that grinding does not take too much time to be completed. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mihara (US 2019/0111536, hereinafter Mihara), in view of Priewasser (CN 108933098A) and Cheng et al. (US 2014/0057052, hereinafter Cheng). Regarding claim 15, Mihara discloses a workpiece processing method for a workpiece including a substrate whose front surface is in an uneven shape with recesses and projections attributable to formation of a plurality of devices on the front surface side of the substrate (fig. 1 and ¶ 0022, a workpiece W includes a plurality of devices D formed on a front surface Wa. The plurality of devices D forms an uneven shape with recesses and projections on the front surface of a substrate), and a protective member which adheres to each of the plurality of devices serving as the projections on the front surface side of the substrate (fig. 1 and ¶ 0024, a workpiece protective member 1 covers each of the devices D in order to protect each of the devices D), but does not disclose the method comprising a holding step of holding a back surface side of the substrate on a chuck table. Priewasser teaches, in an analogous workpiece processing field of endeavor, the method comprising a holding step of holding a back surface side of the substrate on a chuck table (fig. 9 and Priewasser English translation, p. 28:27-31, a back surface side of wafer W is held on a chuck table 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara to hold the back surface side of the substrate as taught by Priewasser so that the protective member of the substrate can be processed. Mihara as modified by Priewasser does not disclose an embedding planarization step of, after the holding step, bringing a rotating grinding wheel closer to the chuck table, and the protective member is pressed and ground to planarize the front surface side of the protective member. Cheng teaches, in an analogous workpiece processing field of endeavor, an embedding planarization step of, after the holding step, bringing a rotating grinding wheel closer to the chuck table, and the protective member is pressed and ground to planarize the front surface side of the protective member (fig. 1(b) and ¶ 0026-27, a rotating grinding device 3 [corresponds to the recited rotating second griding wheel] moves close to a wafer 1 and grinds a protective layer 5 [corresponds to the protective member]. The grinding the protective layer includes pressing the protective layer). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser to provide the planarization step as taught by Cheng in order to make a top surface of the workpiece smooth and even (Cheng ¶ 0032). Mihara as modified by Priewasser and Cheng teaches the embedding planarization step embeds the protective member in boundaries of adjacent ones of the plurality of devices serving as the recesses on the front surface side of the substrate (fig. 9 and Priewasser English translation, p. 28:32-29:10, a rubber film 52 moves downward and presses a protective film 4, thus the protective film 4 can be closely applied to a front side of the wafer to comply with device region profile. The pressing of the protective member by the grinding device 3 of Cheng would embed the protective member in boundaries of the devices D of Mihara). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser and Cheng to embed the protective member as taught by Priewasser so that the devices on the wafer is protected. Mihara as modified by Priewasser and Cheng teaches the chuck table rotates while grinding the protective member. Mihara teaches, in fig. 5, rotating the chuck table 20 during processing the workpiece 4. The chuck table of Mihara can be combined with the planarization method of Cheng to provide the rotating chuck table during the grinding process. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Mihara as modified by Priewasser and Cheng to provide the rotating chuck table during the planarization step in order to enhance the grinding process by rotating the workpiece. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hirata et al. (US 9620415) discloses a method of providing a protective member on a wafer. Fukunaga et al. (CN 110663103A) discloses a method of planarization of a protective member on a substrate. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUKWOO JAMES CHANG whose telephone number is (571)272-7402. The examiner can normally be reached M-F 8:00a-5:00p. 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, David Posigian can be reached at (313) 446-6546. 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. /S.J.C./Examiner, Art Unit 3723 /DAVID S POSIGIAN/Supervisory Patent Examiner, Art Unit 3723
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Prosecution Timeline

Aug 02, 2023
Application Filed
Feb 04, 2026
Non-Final Rejection — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
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Grant Probability
98%
With Interview (+41.0%)
2y 9m
Median Time to Grant
Low
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