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 .
DETAILED ACTION
This Office Action is in response to the Amendment and Request for Reconsideration filed July 20, 2026. Applicant’s amendments to claims 1-5 have been entered. Claims 1-5 have been amended.
Claims 1-5 are currently pending.
Response to Amendment
The amendments to the claims filed July 20, 2026 have been entered. Applicant’s amendments to the claims have failed to overcome each and every rejection set forth in the Non-Final Office Action filed April 30, 2026.
Response to Arguments
Applicant's arguments filed July 20, 2026 have been fully considered but they are not persuasive.
Applicant argues generally on pages 4-7 that the references would not have been combined as alleged by the Examiner and that, even if combined, the alleged combination of references would not teach or suggest each and every feature of the claims, as amended. Applicant’s arguments are not persuasive and will each be addressed separately below.
Applicant argues on pages 5-6 that Kojima does not suggest forming a groove shallower than the measurement limit depth for the purpose of enabling measurement of the groove interior. This argument is not persuasive because a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues on pages 6-7 that Kojima and Schönleber are nonanalogous art. This argument is not persuasive because it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992); MPEP 2141.01(a). In this case, each of Kojima and Schönleber are pertinent to the particular problem with the inventor was concerned: measurement of the depth of a groove or trench. A person having ordinary skill in the art trying to solve the problem would have looked to prior art in the field of measurement of surface features, such as Kojima and Schönleber.
Applicant argues on page 6 that Kojima and Schönleber address different technical problems and have different technical concepts, therefore a person skilled in the art would not be motivated to combine them. This argument is not persuasive because, as discussed above, Kojima and Schönleber are pertinent to the particular problem with the inventor was concerned: measurement of the depth of a groove or trench. Furthermore, when more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See MPEP 2141.01(a)(I).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as discussed in the previous Office Action, and again in the rejection of claims below, Kojima teaches a method comprising cutting a groove on a wafer and measuring the groove; Kojima teaches that the depth of the groove may be adjusted to various depths (Kojima, [0068]). Schönleber teaches a measuring configuration “for precisely measuring deep trenches or trenches with a high aspect ratio, in particular with an aspect ratio, i.e. with a ratio of the trench depth to the trench width, above 50,” (Schönleber, [0298]). The motivation to combine the references would be, as stated in the previous Office Action, expressly recognized by Schönleber, to precisely measure high aspect ratio trenches, analogous to the claimed inspection groove, thereby improving manufacturing process accuracy, resulting in fewer device defects.
Applicant argues on page 6 that even if combined, the combination would not arrive at the claims. This argument is not persuasive. Applicant has not provided any substantial argument in support of the assertion that the combination would not arrive at the claims. Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kojima teaches a method comprising cutting a groove on a wafer and measuring the groove; Schönleber teaches a measuring configuration for precisely measuring high aspect ratio trenches. Therefore, the combination would be sufficient for a person having ordinary skill in the art to arrive at Applicant’s claimed invention, as discussed in the previous Office Action, and again in the rejection of claims below.
Applicant argues on page 6 that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning. This argument is not persuasive. Applicant has provided no arguments in support of this assertion. Furthermore, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally, Examiner notes that Applicant's arguments on pages 4-7 fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant repeatedly argues that the alleged combination of the references fails to teach or suggest this feature of the claims, but does not indicate which feature of the claim is at issue. In order to advance prosecution, Examiner has addressed Applicant’s arguments to the extent possible.
In response to Applicant’s argument on page 7 that the dependent claims are patentably distinct over the prior art, and are also allowable based at least on their dependency from independent claim 1, as amended, see the rejections of the claims below.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
In the previous Office Action, claims 4 and 5 were rejected under 35 U.S.C. 112(b).
Applicant’s amendments to the claims, filed July 20, 2026, have overcome the 35 U.S.C. 112(b) rejections, therefore the 35 U.S.C. 112(b) rejections of claims 4 and 5 have been withdrawn.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al., US 2022/0258369 A1 (hereinafter Kojima) in view of Schönleber et al., US 2018/0164089 A1 (hereinafter Schönleber) and further in view of Mirau, U.S. Pat. No. 2,612,074 (hereinafter Mirau).
Regarding claim 1, as amended, Kojima teaches: A dicing groove inspecting method comprising: forming an inspection groove (Kojima, FIG. 8 shows forming first processed groove 13a [the inspection groove], [0068]) by performing test cutting on a wafer using a dicing device equipped with an observation unit (Kojima, FIGs. 1, 9, cutting apparatus 2 [the dicing device] equipped with image capturing unit 86a [the observation unit], [0034-0035; 0059]) , such that the inspection groove having a depth (Kojima, FIGs. 8, 9, predetermined depth 23, [0068]) (Kojima, FIG. 9, “the upper image capturing unit 86a [the observation unit] captures, with visible light, an image of the first processed groove 13a [the inspection groove formed on the wafer by the test cutting],” this measurement is used to detect a deviation, i.e., measurement, of the first processed groove 13a [the inspection groove] during the first kerf checking step S32, [0069]).
Kojima is silent regarding: the inspection groove having a depth equal to or smaller than a measurement limit depth capable of measuring the inside of the inspection groove by the observation unit is formed on the wafer. However, Kojima teaches that the first processed groove 13a [the inspection groove] is formed to a predetermined depth 23 [a depth] and then measured by the image capturing unit 86 a [the observation unit] (Kojima, [0069]). Additionally, Kojima teaches that “The depth 23 [the depth of the inspection groove] … may be adjusted to any of various depths depending on the workpiece 11 [the wafer],” (Kojima, [0068]). Applicant’s disclosure defines the measurement limit depth as “the maximum depth value capable of measuring the inside of the groove by the observation unit,” [0034]. Applicant’s disclosure discusses measurement limit depth in reference to the aspect ratio of the saw blade width, i.e., the groove width, and depth, and provides examples for measurement limit depth corresponding to aspect ratios below 4 (see FIGs 1, 2, [0034-0045]). Schönleber, in the same field of endeavor, teaches a measurement device for “precisely measuring deep trenches or trenches with a high aspect ratio, in particular with an aspect ratio, i.e. with a ratio of the trench depth to the trench width, above 50,” (Schönleber, see FIG. 20, [0298]).
Therefore, because Kojima teaches measurement of the first processed groove 13a [the inspection groove] having any of various depths during the first kerf checking step S32, shown in FIG. 7 and associated text, it would have been understood by a person having ordinary skill in the art that the process steps taught by Kojima, including the measurement steps, would, implicitly, be within the capabilities of the disclosed cutting apparatus 2 [the dicing device] and image capturing unit 86a [the observation unit], [0034-0035; 0059], e.g., Kojima would not teach a process step that would be impossible to perform using the disclosed apparatus. Additionally, the measurement device taught by Schönleber is capable of a measurement limit depth with an aspect ratio above 50, which is over an order of magnitude greater than the measurement limit depth disclosed by Applicant. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Schönleber with the teachings of Kojima, arriving at Applicant’s claimed invention with predictable results and without undue experimentation. The motivation for doing so would be, as expressly recognized by Schönleber, to precisely measure high aspect ratio trenches, analogous to the claimed inspection groove, thereby improving manufacturing process accuracy, resulting in fewer device defects.
Although neither Kojima nor Schönleber explicitly teach that the observation unit is a white interference microscope, the use of a white interference microscope for measurement of surface features was known in the art before the effective filing date of the claimed invention. For example, as recognized by Applicant, in the Background section of Applicant’s disclosure, “it is possible to use a laser microscope or an interference microscope to observe the groove in three dimensions,” (Applicant’s specification, [0004]). Applicant describes various well known interchangeable white light interference optical systems such as “a Mirau type interference optical system,” “it is also possible to employ … a Michelson type or a Linic type in the observation unit MS,” (Applicant’s specification, [0059]). As Applicant acknowledges, the use of the white interference microscope for measuring the depth of a groove was known in the art, and yields predictable results. For example, as referenced by Applicant, Mirau discloses a light interference microscope for examining and measuring surfaces (Mirau, col. 2, lines 8-28; col. 3, lines 20-30), commonly referred to as “a Mirau type interference optical system.”
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kojima nor Schönleber with the interference microscope disclosed by Mirau, arriving at Applicant’s claimed invention with predictable results and without undue experimentation. The motivation for doing so would be, as expressly recognized by Mirau, to examine and measure surfaces, thereby improving quality control during manufacturing, resulting in improved device performance and reliability..
Regarding claim 2, as amended, Kojima in view of Schönleber and further in view of Mirau teaches: The dicing groove inspecting method according to claim 1, wherein a depth of the inspection groove formed by the test cutting (Kojima, FIGs. 8-16B, predetermined depth 23, [0068]; Schönleber, FIG. 20, trench 2, [0295]) is determined according to an aspect ratio obtained in advance for the observation unit (Kojima, upper image capturing unit 86a [the observation unit] performs first kerf checking step S32, based on captured image of predetermined depth and width of first processed groove 13a, i.e., the aspect ratio obtained in advance, [0069]) and corresponding to a ratio of the measurement limit depth to a width of the groove on the surface of a wafer (Schönleber, see FIG. 20, “an aspect ratio, i.e. with a ratio of the trench depth to the trench width,” [0298]).
Regarding claim 3, as amended, Kojima in view of Schönleber and further in view of Mirau teaches: A dicing method of performing an adjustment work for the dicing device (Kojima, see FIG. 7, correcting steps, i.e., an adjustment, includes first hairline adjustment step S33, [0081]) on a basis of a result obtained by measuring the inside of the inspection groove using the dicing groove inspecting method according to claim 1 (Kojima, FIG. 7 shows flowchart of processing sequence, including performing first hairline adjustment step S33 [the adjustment work] on the basis of measurement obtained during first kerf checking step S32 [the result obtained by measuring the inside of the inspection groove], [0081]) and forming a dicing groove at a position of the wafer overlapping the inspection groove by main processing of the wafer (Kojima, FIGs. 12-15 show cut groove 13b [the dicing groove] formed at a position of workpiece 11 [the wafer] overlapping with central line 13a of first processed groove [the inspection groove] during wafer processing, [0061]).
Regarding claim 4, as amended, Kojima in view of Schönleber and further in view of Mirau teaches: The dicing method according to claim 3, wherein a depth of the dicing groove formed by the main processing (Kojima, FIGs. 12-15 show cut groove 13b [the dicing groove] formed during wafer processing, i.e., formed by the main processing, is approximately equal to the thickness of workpiece 11 [the wafer]; cut groove 13b [the dicing groove] extends from upper surface of workpiece 11 [the wafer] through thickness of workpiece 11 [the wafer] and into upper surface of tape 17) is deeper than a depth of the inspection groove (Kojima, FIG. 11 shows depth 23 [the depth of the inspection groove] is less than thickness of workpiece 11 [the wafer], [0068]).
Regarding claim 5, as amended, Kojima in view of Schönleber and further in view of Mirau teaches: The dicing method according to claim 3, wherein when the dicing groove is formed by sequentially forming a first dicing groove (Kojima, FIGs. 11-13 show forming groove 13a1 [the first dicing groove], [0061-0068]) and a second dicing groove which is narrower and deeper than the first dicing groove (Kojima, FIGs. 11-15, cut groove 13b1 [the second dicing groove] shown narrower and deeper than groove 13a1 [the first dicing groove], [0061-0068]) on the wafer in the main processing (Kojima, FIG. 7, “first processed grooves 13a and second processed grooves 13b, are successively formed in the workpiece 11 by the first cutting blade 84a and the second cutting blade 84b,” [0067]), the inspection groove includes a first inspection groove which has a same width as that of the first dicing groove (Kojima, FIG. 11, multiple instances of first processed groove 13a [the inspection groove] with same width as groove 13a1 [the first dicing groove] having predetermined depth 23, i.e., equal to or smaller than the measurement limit depth) according to a width of the first dicing groove and a second inspection groove which has a same width as that of the second dicing groove and is deeper than the first inspection groove (Kojima, FIGs. 13-15 show multiple instances of cut groove 13b [the second inspection groove] with same width as groove 13b1 [the second dicing groove] and deeper than first processed groove 13a [the inspection groove]), wherein the first dicing groove formed by the main processing of the wafer (Kojima, FIGs. 12-15 show groove 13a1 [the first dicing groove] formed during wafer processing) is formed to overlap the first inspection groove (Kojima, see FIGs. 12-15, groove 13a1 [the first dicing groove] shown overlapping first processed groove 13a [the inspection groove]), and wherein a depth of the first dicing groove is deeper than the second inspection groove (Kojima, see FIGs. 11-15, depth shown extending from upper surface of workpiece 11 [the wafer] through thickness of workpiece 11 [the wafer] and into upper surface of tape 17, [0061-0068]).
Kojima is silent regarding: the inspection groove having a depth equal to or smaller than a measurement limit depth capable of measuring the inside of the inspection groove by the observation unit is formed on the wafer. However, as explained above in the rejection of claim 1. It would have been understood by a person having ordinary skill in the art that the process steps taught by Kojima, including the measurement steps, would, implicitly, be within the capabilities of the disclosed apparatus. Kojima, FIG. 11 shows multiple instances of first processed groove 13a formed on wafer, analogous to the first inspection groove and the second inspection groove. Kojima teaches that the depth 23 [the depth of the inspection groove] may be adjusted to any of various depths depending on the workpiece 11 [the wafer], [0068]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Kojima in view of Schönleber insofar as selecting the appropriate depth of each groove from the finite number of predictable possible solutions with a reasonable expectation of success. Additionally, absent a showing of new or unexpected results, mere duplication of parts, as with Applicant’s claimed first dicing groove, second dicing groove, first inspection groove, and second inspection groove, is a common practice requiring only ordinary skill in the art and has no patentable significance absent a showing of new and unexpected results, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP 2144.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. The cited prior art discloses similar materials, devices, and methods.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK NIELSEN whose telephone number is (703)756-1266. The examiner can normally be reached Monday - Friday, 8:30 A.M. - 5:30 P.M..
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, BRENT A FAIRBANKS can be reached at (408)918-7532. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L.N./Examiner, Art Unit 2899
/Brent A. Fairbanks/Supervisory Patent Examiner, Art Unit 2899
