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 .
Response to Amendment
This Office action is responsive to the amendment filed 6/9/2026 for application 18452756. Claims 4-10 are newly presented by Applicant. Claims 1-10 are pending.
Election/Restrictions
Newly submitted claims 4-7 & 10 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the apparatus, as claimed, could be used to practice another and materially different apparatus wherein the pulsed irradiation beam is applied to Kapton rather than a wafer with an SiO2 film and, additionally, could oscillate the laser at a pulse interval greater than a thermal diffusion time in an SiO2 film.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 4-7 & 10 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 4-7 & 10 are withdrawn from consideration. Claims 1-3 & 8-9 are examined below.
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.
Claims 8-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding Independent Claim 8, the recitation “to emit the initial pulsed laser beam. and…” is vague and indefinite because (a) it is unclear whether all limitations including and following “and” are part of the claim, given that the claim ends at the period following “laser beam” in the 8th to last line and (b) if the limitations including and following “and” discussed above are not part of the claim, then the recitation “the laser oscillation unit is configured to oscillate a pulsed laser of deep ultraviolet light at a pulse interval shorter than a thermal diffusion time in an SiO2 film stacked on an upper surface of the silicon substrate” is vague and indefinite because it is unclear what pulse interval is required of the laser oscillation unit. The thermal diffusion time is dependent on the thickness of the SiO2 film yet the film itself is not positively recited (the film is “stacked on an upper surface of the silicon substrate” whereas the silicon substrate is part of the wafer, which is not positively recited – the wafer is recited as an intended use of the chuck table at line 2). Since the wafer, and thus the silicon substrate, is not positively recited, the film is not required in the claim and the thermal diffusion time is not specified. Since the laser oscillation unit must be structurally configured to provide a pulse interval shorter than this thermal diffusion time, but the thermal diffusion time is not specified, it is unclear what pulse interval the laser oscillation unit is structurally required to provide.
Dependent Claim 9 is rejected under 35 U.S.C. 112(b) for its dependence from claim 8.
Drawings
The drawings were received on 6/9/2026. These drawings are not acceptable (the replacement sheets do not provide sufficient weight, density, and darkness of all lines and letters).
The drawings (Figs. 3-4B) are objected to, in accordance with 37 CFR 1.84(l), because the weight, density, and darkness of all lines and letters (dashed lines, solid lines, and text within and outside of shaded areas) are not heavy enough to permit adequate reproduction.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a feed mechanism that causes a relative processing feed of the chuck table and the laser beam irradiation unit” (claim 1).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The recitation “laser oscillation unit that emits an initial pulsed laser beam” (claim 1) is not presumed to invoke 35 U.S.C. 112(f) because “laser oscillation unit” is a term of art that one of ordinary skill in the art would immediately recognize as sufficient structure for performing the claimed function.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 & 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hadano 20190111518.
Regarding Independent Claim 1, Hadano teaches a laser processing machine (Figs. 1-2) comprising:
a chuck table (22) that holds a wafer having a silicon substrate (silicon wafer 10);
a laser beam irradiation unit (discussed further below) that applies a pulsed irradiation laser beam to the wafer held on the chuck table (para. [0033]); and
a feed mechanism that causes a relative processing feed of the chuck table and the laser beam irradiation unit (interpreted under 35 U.S.C. 112(f), mechanisms 50/52; para. [0024]),
wherein the laser beam irradiation unit includes a laser oscillation unit (Fig. 4, oscillator 82) that emits an initial pulsed laser beam (para. [0033]), and a condenser (86) that condenses the initial pulsed laser beam emitted by the laser oscillation unit and focuses the pulsed irradiation laser beam on the wafer held on the chuck table (para. [0034]), and
the laser oscillation unit is configured to oscillate a pulsed laser of deep ultraviolet light (wavelength of 226 nm, which is within the range of deep ultraviolet light as defined by Applicant at specification para. [0020]; see Hadano at para. [0044]).
Regarding Dependent Claim 2, Hadano further teaches the deep ultraviolet light is a laser beam having a wavelength of 266 nm or shorter (226 nm; para. [0044]), and the initial pulsed laser beam emitted by the laser oscillation unit has a pulse width of 200 fs, which corresponds to a smallest point of energy density, or shorter (50 fs, which is shorter than 200 fs; para. [0047]).
Regarding Dependent Claim 3, Hadano further teaches the laser beam irradiation unit is configured such that, when the initial pulsed laser beam emitted by the laser oscillation unit is applied as the pulsed irradiation laser beam, the pulsed irradiation laser beam has a pulse interval shorter than 1.0 μs, which is the thermal diffusion time in the SiO2 film (the pulse interval is 0.003 µs, corresponding with Hadano’s repetition frequency of 300 MHz, which is shorter than the recited 1.0 µs; paras. [0029], [0046]).
Regarding Independent Claim 8, Hadano teaches a laser processing machine (Figs. 1-2) comprising:
a chuck table (22) that holds a wafer having a silicon substrate (silicon wafer 10);
a laser beam irradiation unit (discussed further below) that applies a pulsed irradiation laser beam to the wafer held on the chuck table (para. [0033]); and
a feed mechanism that causes a relative processing feed of the chuck table and the laser beam irradiation unit (interpreted under 35 U.S.C. 112(f), mechanisms 50/52; para. [0024]),
wherein the laser beam irradiation unit includes a laser oscillation unit (Fig. 4, oscillator 82) that emits an initial pulsed laser beam (para. [0033]), and a condenser (86) that condenses the initial pulsed laser beam emitted by the laser oscillation unit and focuses the pulsed irradiation laser beam on the wafer held on the chuck table (para. [0034]), and
the laser oscillation unit is configured to oscillate a pulsed laser of deep ultraviolet light (wavelength of 226 nm, which is within the range of deep ultraviolet light as defined by Applicant at specification para. [0020]; see Hadano at para. [0044]) at a pulse interval shorter than a thermal diffusion time in an SiO2 film stacked on an upper surface of the silicon substrate (pulse frequency at 300 MHz, which corresponds with a pulse interval of .003 µs, which is shorter than the thermal diffusion time of 1 µs disclosed by Applicant for the SiO2 film at spec. para. [0029]; see Hadano at para. [0046]), and to emit the initial pulsed laser beam (LB, see Fig. 4), and to emit the initial pulsed laser beam (LB, see Fig. 4). and wherein the laser beam irradiation unit is configured such that, when the initial pulsed laser beam emitted by the laser oscillation unit is applied as the pulsed irradiation laser beam, the pulsed irradiation laser beam has a pulse interval shorter than 1.0 μs, which is the thermal diffusion time in the SiO2 film (the pulse interval is 0.003 µs, corresponding with Hadano’s repetition frequency of 300 MHz, which is shorter than the recited 1.0 µs; paras. [0029], [0046]), and further wherein the laser beam irradiation unit is set to an average power (para. [0045]). Note that the recitations “that holds a wafer having a silicon substrate” and “an SiO2 film stacked on an upper surface of the silicon substrate” do not require the wafer and thus do not require the silicon substrate or the SiO2 film stacked on the upper surface of the silicon substrate. The recitation “the laser beam irradiation unit is set to an average power of 0.8 W” is directed to a functional limitation of the claimed apparatus. Hadano teaches an attenuator to control the output of the laser beam (para. [0033]). As one of ordinary skill in the art would have understood, an attenuator adapted to control the output of the laser beam is configured to adjust the power output of the laser beam. Thus, Hadano’s machine is capable, via adjustment of the included attenuator, of operating in the claimed manner such that the average power output is 0.8 W. It has been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP 2114 II. Furthermore, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. As Hadano teaches all the structural limitations of the claims, the functional recitation in the instant claim does not differentiate the claimed apparatus from the prior art apparatus, and therefore the instant claim is anticipated by Hadano.
Regarding Dependent Claim 9, Hadano further teaches the deep ultraviolet light is a laser beam having a wavelength of 266 nm or shorter (226 nm; para. [0044]), and the initial pulsed laser beam emitted by the laser oscillation unit has a pulse width of 200 fs, which corresponds to a smallest point of energy density, or shorter (50 fs, which is shorter than 200 fs; para. [0047]).
Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
Applicant’s argument (p. 9 of Remarks) that Hadano fails to disclose or suggest an SiO2 film stacked on the upper surface of the wafer, is not concerned with delamination of such a film, and thus fails to teach any details of claim 1 regarding avoiding delamination or maintaining the SiO2 film in a liquid phase state is unpersuasive. Applicant’s claim, as noted in the claim rejections above, does not positively recite the wafer and thus does not positively recite the silicon substrate or the SiO2 wafer stacked on the upper surface of the silicon substrate. Therefore Hadano’s apparatus merely needs to be capable of operating with respect to such a wafer, substrate, and film. As there is no structural distinction between the claimed machine and Hadano’s machine, Hadano’s machine will be capable of operating as claimed (particularly given the laser parameters taught by Hadano in view of the wafer, though not required in the claim, taught by Hadano). The claim is directed to the apparatus itself, not a method of using it, and so Hadano does not need to teach details related to desired results of the operation of the machine with a SiO2 film. Hadano’s structure is the same, the laser parameters are the same, and Hadano is configured to process components involving wafers. Thus, Hadano anticipates the claim.
Applicant’s argument (pp. 9-10 of Remarks) that Hadano fails to teach the average power of 0.8 W recited in new claim 8 is unpersuasive. Hadano teaches an attenuator for adjusting laser power output and is thus found capable of adjusting the power to provide the recited average power. Note that Applicant’s specification is very limited with regard to the average power (para. [0028] only states that laser processing conditions “may be set” to include the recited average power (this implies the power can be adjusted, but Applicant does not clearly disclose such a function or a structure to perform that function). There is no disclosure by Applicant concerning how this power is set or what would structurally distinguish, with respect to the power output, the apparatus claimed or disclosed from Hadano’s machine which is capable of variable power output.
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 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT J WALTHOUR whose telephone number is (571)272-4999. The examiner can normally be reached Monday-Friday, 10 a.m.-6 p.m. Eastern.
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/SCOTT J WALTHOUR/Primary Examiner, Art Unit 3741
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