DETAILED ACTION
This Office Action is responsive to the application filed on September 11, 2023. Claims 1-8 are pending.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 2 is objected to because of the following informalities:
“the interval (W3)” at line 2 appears in error for – the interval (W3) between the one of the induces lines and the adjacent modified line --.
“the interval (W2)” at lines 2-3 appears in error for – the interval (W2) between the two adjacent ones of the modified lines --.
Appropriate correction is required.
Information Disclosure Statement
The information disclosure statement filed 02/27/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. With respect to the Foreign Patent Documents the English abstracts have been considered. However, with respect to the Office Action issued by the Taiwan Intellectual Property Office, it has been placed in the application file, but the information referred to therein has not been considered because no explanation of relevance has been included.
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 4 and 5 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 pre-AIA the applicant regards as the invention.
In Claim 4, “lines are parallel or nearly parallel” renders the claim indefinite. The term ‘nearly parallel’ is a relative term, is not defined by the claim, and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention; specifically, they would not be apprised how far the lines may deviate from parallel while still being considered nearly parallel. For example, the term could be limited to deviations within 1 degree, 5, degrees, 10 degrees and other amounts thereby requiring the exercise of subjective judgment without restriction.
In Claim 5, “angle is about or equal to 90 degrees” renders the claim indefinite. The term “about… 90 degrees” is a relative term, is not defined by the claim, and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention; specifically, they would not be apprised how far the angles that deviate from 90 degrees while still being considered about 90 degrees. For example, the term could be limited to deviations within +/- 1 degree, 5, degrees, 10 degrees and other amounts thereby requiring the exercise of subjective judgment without restriction.
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:
“laser module” in claim 1;
“rotating module” in claim 1;
“optical path conducting module” in claim 6;
“transfer module” in claim 7; and
“control module” in claim 8.
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.
Prior Art Relied Upon
This action references the following issued US Patents and/or Patent Application Publications:
US PATENT or PUBLICATION NUMBER
HEREINAFTER
US-20230112548-A1
“IGA”
US-20200316724-A1
“DONOFRIO”
US-20230241723-A1
“NOMARU”
US-20220088717-A1
“HIRATA”
US-20230381894-A1
“IGA ‘894”
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over IGA in view of DONOFRIO and NOMARU.
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Re Claim 1, IGA teaches a laser slicing apparatus (Figure 4) used to process a modified layer 17 at a predetermined depth inside a substrate [11, 17], the laser slicing apparatus comprising:
a laser module 8 for providing a laser beam;
a focusing lens set [12, 14, 16] having a light splitting element 12 to split the laser beam into a plurality of focused laser beams (¶¶0034-0037, 0066) for forming a plurality of induce lines on the modified layer (¶0065); and
a movement module used to move the focusing lens set to form a plurality of modified groups on the modified layer by the plurality of focused laser beams (¶0038).
However, IGA fails to teach wherein any one of the modified groups is located between any two adjacent ones of the induce lines, each of the modified groups comprises a plurality of modified lines, and an interval is between any two adjacent ones of the modified lines.
DONOFRIO teaches for forming a plurality of induce lines 71 on a modified layer 70 and a plurality of modified groups on the modified layer [groups formed by 72, 73] (annotated in Image 1), wherein any one of the modified groups is located between any two adjacent ones of the induce lines (see Figure 11A and Image 1; e.g., Modified Group A is between induces lines annotated “X” and “Y” in Image 1), and each of the modified groups comprises a plurality of modified lines [72, 73], and an interval (W2) [annotated “Interval A” or “Interval B” in Image 1] is between any two adjacent ones of the modified lines (See Image 1). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the apparatus wherein any one of the modified groups is located between any two adjacent ones of the induce lines, each of the modified groups comprises a plurality of modified lines, and an interval is between any two adjacent ones of the modified lines in order to facilitate lateral propagation of cracks while separating a layer from an ingot and/or to separate layers with increased throughput and/or minimal kerf loss per unit of throughput (¶¶0221, 0225-0226). However, IGA in view of DONOFRIO as discussed so far fails to teach a rotating module used to rotate the light splitting element with a predetermined angle to form the plurality of modified groups on the modified layer by the plurality of focused laser beams.
IGA as applied notes the light splitting element may be a diffractive optical element (DOE) (¶0034). NOMARU teaches a rotating module 38, 40 of a lens focusing set (as shown in Figure 7A) used to rotate a light splitting element (Diffractive optical element beam splitter 94) with a predetermined angle to form a plurality of modified groups on a modified layer by a plurality of focused laser beams with corresponding focal points (Figs. 7A, ¶¶0037, 0072-0079). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the movement module so it includes a rotating module used to rotate the light splitting element with a predetermined angle to form the plurality of modified groups on the modified layer by the plurality of focused laser beams, in order to orient the beams and focal points output from a diffractive optical element beam splitter (NOMARU ¶¶0037, 0053, 0072-0073). It has been held that [when] all the claimed elements were known in the prior art (in the instant case, a beam splitter formed of a diffractive optical element having a rotary element) and one skilled in the art could have combined the elements as claimed by known methods (a rotating module used to rotate the light splitting element with a predetermined angle) with no change in their respective functions (form the plurality of modified groups on the modified layer by the plurality of focused laser beams), and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art (a degree of freedom for rotational orientation adjustment of beams and focal points output from a diffractive optical element beam splitter), it would have been an obvious extension of prior art teachings, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007); citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976). See MPEP § 2143 (I) A.
Re Claim 2, IGA in view of DONOFRIO and NOMARU teaches the laser slicing apparatus of claim 1, but as discussed so far fails to teach wherein an interval (W3) is between any one of the induce lines G1 and the adjacent modified line M, and the interval (W3) is greater than the interval (W2).
DONOFRIO further teaches an interval 75 is between any one of the induce lines (annotated “Z” in Image 1) and the adjacent modified line 72, and the interval is greater than the interval (W2) [annotated “INTERVAL B” in Image 1]. It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the apparatus wherein an interval (W3) is between any one of the induce lines G1 and the adjacent modified line M, and the interval (W3) is greater than the interval (W2), for the reasons discussed with respect to DONOFRIO in Claim 1.
Re Claim 3, IGA in view of DONOFRIO and NOMARU teaches the laser slicing apparatus of claim 1, wherein the focusing lens set necessarily has an aperture but as discussed so far fails to teach a numerical aperture greater than or equal to 0.4.
DONOFRIO teaches providing a focusing lens set having a numerical aperture greater than or equal to 0.4 (¶0207). See also NOMARU ¶0061. It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the focusing lens set with a numerical aperture greater than or equal to 0.4, to facilitate minimal kerf loss via desired depth of formation of subsurface laser damage in the substrate (¶0208).
Re Claim 4, IGA in view of DONOFRIO and NOMARU teaches the laser slicing apparatus of claim 1, but as discussed so far fails to teach wherein the plurality of induce lines and the plurality of modified lines are parallel or nearly parallel to each other.
DONOFRIO further teaches the plurality of induce lines and the plurality of modified lines are parallel or nearly parallel to each other (Figure 11A, ¶0219). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide wherein the plurality of induce lines and the plurality of modified lines are parallel or nearly parallel to each other, for the reasons discussed with respect to DONOFRIO in Claim 1.
Re Claim 5, IGA in view of DONOFRIO and NOMARU teaches the laser slicing apparatus of claim 1, but as discussed so far fails to teach wherein the predetermined angle is about or equal to 90 degrees.
IGA further teaches providing a predetermined angle about or equal to 90 degrees with respect to a direction (see claim 1). This facilitates performance of separation layer steps and indexing steps ( e.g., “plurality of focal points aligned side by side along a first direction parallel to the first surface … moving the focal points and the workpiece relative to each other along a second direction orthogonal to the first direction and parallel to the first surface”). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the rotating module of the lens focusing set used to rotate the light splitting element with a predetermined angle of about or equal to 90 degrees to form the plurality of modified groups, in order to facilitate multiple focal points for indexing and separation layer forming steps (IGA claim 1).
Re Claim 6, IGA in view of DONOFRIO and NOMARU teaches the slicing apparatus of claim 1, but as discussed so far fails to teach further comprising an optical path conducting module for conducting the laser beam to the focusing lens set.
NOMARU teaches an optical path conducting module for conducting the laser beam to the focusing lens set (Fig. 7A, ¶¶0072-0074 – See 32 and/or 36). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide an optical path conducting module for conducting the laser beam to the focusing lens set, for the reasons discussed with respect to DONOFRIO in Claim 1.
Re Claim 7, IGA in view of DONOFRIO and NOMARU teaches the laser slicing apparatus of claim 1. IGA further teaches a transfer module [holding table 4] for carrying and moving the substrate to correspond to the plurality of focused laser beams (¶¶0031-0034, 0075-0076).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over IGA in view of DONOFRIO and NOMARU as applied above, further in view of HIRATA.
Re Claim 8, IGA in view of DONOFRIO and NOMARU teaches the laser slicing apparatus of claim 7, comprising a module electrically connected to the laser module, the rotating module (IGA ¶¶0036-0039, 0074-0076) and the transfer module respectively (NOMARU ¶¶0037-0041).
HIRATA teaches a control module 66 electrically connected to a laser module, a movement module and transfer module respectively (¶¶0043-0044, 0048-0058). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the apparatus with comprising a control module electrically connected to the laser module, the rotating module and the transfer module respectively, in order to automatically control actuation of the laser and separation mechanism (¶¶0043-0044). It has been held that [when] all the claimed elements were known in the prior art (in the instant case, a control device) and one skilled in the art could have combined the elements as claimed by known methods (electronic control of a laser and separation unit via electrically connecting a computer to the laser module, rotation module and transfer module respectively) with no change in their respective functions (separating a wafer), and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art (central electronic control of the laser slicing apparatus), it would have been an obvious extension of prior art teachings, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007); citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976). See MPEP § 2143 (I) A.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
IGA ‘894 is pertinent to a beam splitting laser slicing apparatus, operable to provide different focal points at more than one depth in the substrate.
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Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON H DUGER whose telephone number is (313) 446-6536. The examiner can normally be reached 8:30a to 4:30p EST Monday & Tuesday and 8:00a to 2:00p Wednesday, and is OFF Thursday and Friday.
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JASON H DUGER
PRIMARY EXAMINER, ART UNIT 3741
PHONE (313) 446 6536
FAX (571) 270 9083
DATE
June 24, 2026
/JASON H DUGER/Primary Examiner, Art Unit 3741
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