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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claim 5, in the reply filed on 12/19/2025 is acknowledged.
Claim Rejections - 35 USC § 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 CFR 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 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 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yana et al. (JP-2021197482-A, machine translation) in view of Isojima et al. (JP-2020009636-A, machine translation).
Regarding Claim 5, Yana teaches a method of processing a workpiece (Paragraph [0001] method for processing a workpiece), comprising:
a covering step of covering a surface of the workpiece with a protective film (Paragraphs [0093-0099] Figure 5B a protective film (element 27) is formed on the surface of the workpiece (elements 21 and 23));
after the covering step, an irradiating step of irradiating the protective film along projected processing lines established on the workpiece with a pulsed laser beam having a wavelength absorbable by the protective film, thereby removing portions of the protective film along the projected processing lines to expose portions of the workpiece (Paragraphs [0103-0106] and [0121] a pulsed laser processes the workpiece to remove part of the protective film (element 27) to form grooves (element 33) that expose portions of the workpiece (element 11). Paragraphs [0124-0127] protective film has absorbance of laser wavelengths); and,
after the irradiating step, a plasma etching step of performing plasma etching on the exposed portions of the workpiece using the protective film as a mask (Paragraph [0123] after the laser grooves are formed a plasma etching process divides the workpiece while the protective film protects the surface of the workpiece).
Yana fails to teach that the protective film has a hardness in a range from 0.0093 GPa to 0.13 GPa. Yanna teaches that the protective film can comprise polyvinylpyrrolidone (Paragraphs [0019-0020]).
Isojima teaches forming a resin layer over an electronic device (Paragraph [0009] resin layer is formed over a diode element). Isojima teaches that the resin layer can absorb light (Paragraph [0009] resin layer contains a light-absorbing agent) and can comprise and vinylpyrrolidone (Paragraphs [0071-0073] resin layer includes a polymerizable compound that can have vinylpyrrolidone). Isojima teaches that the resin layer can have a hardness of 100-600MPa (equivalent to 0.1-0.6 GPa).
It would have been obvious to one of ordinary skill in the art to have modified the method of Yana such that the protective film had a hardness within the range taught by Isojima.
This modification would have been obvious to one of ordinary skill in the art as it could be considered the combination of prior art elements according to known methods to yield predictable results. Yanna is silent on the hardness of the layer taught, while Isojima teaches a layer that can comprise the same polymer compound, is capable of absorbing light, and that the layer has a range of hardness. The combination would have had the predictable result of providing a hardness for that layer. See MPEP 2143(I)(A).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a hardness at a level within the disclosed range of 0.1-0.6 GPa, including at amounts that overlap with the claimed range of 0.0093-0.13 GPa. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW KEELAN LAOBAK whose telephone number is (703)756-5447. The examiner can normally be reached Monday - Friday 8:00am - 5:30pm.
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/A.K.L./Examiner, Art Unit 1713 /DUY VU N DEO/Primary Examiner, Art Unit 1713