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 I, including original claims 1-7 and 16-20, in the reply filed on 12/22/2025 is acknowledged. Furthermore, the Examiner acknowledges the cancellation of non-elected claims 8-15, and the addition of newly added claims 21-28.
Claim Objections
Claims 1 and 24 are objected to because of the following informalities:
Claims 1 and 24 lack the article “A” in the preamble. Claims 1 and 24 should be amended to recite, respectively:
1. A support tape for a wafer, comprising:
a center region having a first surface and a second surface opposite the first surface;
an adhesive layer provided on at least one of the first surface and the second surface, the adhesive layer securing the center region to the wafer; and
a tab formed from the support tape and extending from an outer edge of the center region, the tab defining a gripping region for removal of the center region from the wafer.
24. A support tape for a wafer, comprising:
a first portion;
an adhesive layer provided on a surface of the first portion and securing the wafer to the first portion; and
a tab extending from an edge of the first portion and defining a gripping region.
Appropriate correction is required.
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “support means”, “coupling means”, and “gripping means” in claims 16-23.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or
(2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20 is directed to a product (back grinding support means), and is therefore defined by the structure, rather than the method of manufacture. Claim 20 further limits product claim 16 by defining the method in which the structure of claim 16 is made (formed during a back grinding support means cutting process), and as such is a product-by-process claim. The Examiner notes that product by process limitations are not given patentable weight in a claim drawn to structure. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Since the product-by-process limitations of claim 20 are not given patentable weight, claim 20 fails to further limit the subject matter of the claim on which it depends, and therefore does not meet the requirements of 35 USC § 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 6-7, 16-20 and 23-28 are rejected under 35 U.S.C. 103 as being unpatentable over Mong et al. (US 2003/0235937 A1) in view of Dronen et al. (PG Pub. No. US 2015/0034238 A1).
Regarding claim 1, Mong teaches a support tape (¶ 0024: 208) for a wafer (¶ 0022: 202), comprising:
a center region having a first surface and a second surface opposite the first surface (fig. 2C: 208 includes a center region with opposing surfaces);
an adhesive layer (¶ 0023: 204) provided on at least one of the first surface and the second surface, the adhesive layer securing the center region to the wafer (fig. 2C: 204 secures at least center region of 208 to wafer 202); and
a tab (¶ 0021) formed from the support tape (¶ 0021: tabs formed to extend from 208), the tab defining a gripping region for removal of the center region from the wafer (¶ 0021: tabs facilitate removal of center region of 208 from 202).
Mong fails to teach the tabs extend from an outer edge of the center region.
Dronen teaches tabs of a support tape (¶ 0056: portions of tape 480 extending beyond periphery of 402, 403 and/or 408) extend from an outer edge of a center region of the support tape (fig. 4: 480 includes tab-shaped portions extending from outer edge of a center region of 480).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the support tape tabs of Mong from an outer edge of the center region, as a means to facilitate peeling the support tape without damaging the substrate (Dronen, ¶ 0053).
Regarding claim 2, Mong in view of Dronen teaches the support tape of claim 1, wherein the tab is a first tab and wherein the support tape further comprises a second tab, the second tab formed from the support tape and extending from the outer edge of the center region (Dronen, fig. 4: 480 includes at least two tabs extending from a center region).
Regarding claim 6, Mong in view of Dronen teaches the support tape of claim 1, wherein the tab is associated with a pulling angle (Dronen, fig. 4: 480 pulled at an angle), the pulling angle specifying an angle at which the support tape is removed from the wafer (Dronen, fig. 4: 480 removed from substrate 402 at an angle).
Regarding claim 7, Mong in view of Dronen teaches the support tape of claim 6, wherein the pulling angle is based, at least in part, on a structure of the wafer (Dronen, fig. 4: pull angle of 408 based on size, shape and/or structural composition of 402).
Regarding claim 16, Mong teaches a back grinding support means (¶ 0024: 204 and/or 208) for a wafer (¶ 0022: 202), comprising:
a center region having a coupling means on a surface (fig. 2C: 204/208 includes a center portion coupled to 202), the coupling means for securing the back grinding support means to the wafer (¶ 0024, fig. 2F: center of 204/208 secured to 202); and
a gripping means (¶ 0027: non-illustrated tabs), the gripping means defining a gripping region for removing the back grinding support means from the wafer (¶ 0027: tabs configured to be removed from 202), the gripping means and the center region forming a single, unitary piece (¶ 0028: tab placed in 204, meeting the broadest reasonable interpretation of ‘a single unitary piece’).
Mong does not teach the tabs extending from a perimeter of the center region.
Dronen teaches tabs of a support tape (¶ 0056: portions of tape 480 extending beyond periphery of 402, 403 and/or 408) extend from an outer edge of a center region of the support tape (fig. 4: 480 includes tab-shaped portions extending from outer edge of a center region of 480).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the support tape tabs of Mong from an outer edge of the center region, as a means to facilitate peeling the support tape without damaging the substrate (Dronen, ¶ 0053).
Regarding claim 17, Mong in view of Dronen teaches the back grinding support means of claim 16, wherein the gripping means is a first gripping means and wherein the grinding support means further comprises a second gripping means extending from the perimeter of the center region (Dronen, fig. 4: 408 comprises at least two tabs extending from center portion).
Regarding claim 18, Mong in view of Dronen teaches the back grinding support means of claim 17, wherein the second gripping means is positioned on the perimeter at least at a forty-five degree angle from the first gripping means (Dronen, fig. 4: second tab located 180 degrees from first tab).
Regarding claim 19, Mong in view of Dronen teaches the back grinding support means of claim 17, wherein the first gripping means and the second gripping means are associated with different pulling angles (Dronen, fig. 4: opposing tabs of 480 oriented at different angles).
Regarding claim 20, Mong in view of Dronen teaches the back grinding support means of claim 16, wherein the gripping means is formed during a back grinding support means cutting process (not given patentable weight, see 35 USC § 112(d) rejection above. Mong and Dronen teach all structural limitations of claim 20).
Regarding claim 23, Mong in view of Dronen teaches the back grinding support means of claim 19, wherein each of the different pulling angles are based, at least in part, on a structure of the wafer (Dronen, fig. 4: angles of tabs of 480 based on size, shape and/or structural composition of wafer 402).
Regarding claim 24, Mong teaches Support tape (¶ 0024: 204 and/or 208) for a wafer (¶ 0023: 202), comprising:
a first portion (fig. 2C among others: 204/208 comprises at least one portion);
an adhesive layer provided on a surface of the first portion (¶ 00024: 204/208 includes an adhesive surface) and securing the wafer to the first portion (fig. 2C: 202 secured to surface of 204/208); and
a tab defining a gripping region (¶¶ 0027-0028: at least one of 204 or 208 includes an integrated removal tab).
Mong fails to teach the tab extending from an edge of the first portion.
Dronen teaches tabs of a support tape (¶ 0056: portions of tape 480 extending beyond periphery of 402, 403 and/or 408) extend from an outer edge of a first portion of the support tape (fig. 4: tab-shaped portions of 480 extend from center region of 480).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the support tape tabs of Mong from an outer edge of the first portion, as a means to facilitate peeling the support tape without damaging the substrate (Dronen, ¶ 0053).
Regarding claim 25, Mong in view of Dronen teaches the support tape of claim 24, wherein a size of the tab is based, at least in part, on a size of the first portion (Dronen, fig. 4: size of extending tabs based on size of center of 480 covering 402/403/408).
Regarding claim 26, Mong in view of Dronen teaches the support tape of claim 24, wherein the tab and the first portion are formed from a single, unitary piece (Mong, ¶¶ 0027-0028: tabs added to shape of 208, or formed in 204, meeting the broadest reasonable interpretation of ‘a single unitary piece’).
Regarding claim 27, Mong in view of Dronen teaches the support tape of claim 24, wherein the tab is associated with a pulling angle (Dronen, fig. 4: tab associated with angle of removal).
Regarding claim 28, Mong in view of Dronen teaches the support tape of claim 27, wherein the pulling angle is based, at least in part, on a structure of the wafer (Dronen, fig. 4: angle of 408 tab based in part on size, shape and/or structural composition of wafer 202).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mong in view ofd Dronen as applied to claim 2 above, and further in view of Lee et al. (PG Pub. No. US 2021/0237399 A1).
Regarding claim 3, Mong in view of Dronen teaches the support tape of claim 2, wherein the second tab is positioned on the outer edge of the center region (Dronen, fig. 4: second tab located on outer edge of central portion of 408).
Mong in view of Dronen fails to teach the second tab is positioned at a forty-five degree angle from the first tab.
Lee teaches a support tape (¶ 0052: 300) including a second tab (¶ 0110: 130_1) positioned at a forty-five degree angle from a first tab (fig. 16: 130_1 positioned at a forty-five degree angle from first tab 120_1).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the second tab of Mong in view of Dronen at a forty-five degree angle from the first tab, as a means to simultaneously release the support tape in two directions, reducing the likelihood of damage such as tearing or stretching the support tape during removal.
Claims 4 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Mong in view of Dronen as applied to claims 1 and 16 above, and further in view of Keough (PG Pub. No. US 2020/0162597 A1).
Regarding claim 4, Mong in view of Dronen teaches the support tape of claim 1, comprising a tab (Mong, ¶¶ 0027-0028, and/or Dronen fig. 4: tab portion(s) of 408).
Mong in view of Dronen fails to teach the tab has a semicircle shape.
Keough teaches a support tape (¶ 0054: 80) including semicircle tabs (¶ 0043 & fig. 7: 54, 56).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the tabs of Mong in view of Dronen fails with a semicircle shape, as a means to facilitate a grip force appropriate for peeling the support tape.
Furthermore, modifying Mong in view of Dronnen to include the claimed feature of "the tab has a semicircle shape" would have involved a mere change in the shape of a component. Absent persuasive evidence that the particular shape of the claimed tab is significant, a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 21, Mong in view of Dronen teaches the back grinding support means of claim 16, comprising a gripping means (Mong, ¶¶ 0027-0028, and/or Dronen fig. 4: tab portion(s) of 408).
Mong in view of Dronen fails to teach the gripping means has a semicircle shape.
Keough teaches a support means (¶ 0054: 80) including semicircle gripping means (¶ 0043 & fig. 7: 54, 56).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the gripping means of Mong in view of Dronen fails with a semicircle shape, as a means to facilitate a grip force appropriate for peeling the support means.
Furthermore, modifying Mong in view of Dronnen to include the claimed feature of "the gripping means has a semicircle shape" would have involved a mere change in the shape of a component. Absent persuasive evidence that the particular shape of the claimed gripping means is significant, a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claims 5 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Mong in view of Dronen and Keough as applied to claims 1 and 16 above, and further in view of Paxton et al. (PG Pub. No. US 20040020133 A1).
Regarding claims 5 and 21, Mong in view of Dronen and Keough teaches the support tape of claim 4 and the back grinding support means of claim 21, comprising a gripping tab with a semicircle shape (Keough, fig. 7).
Mong in view of Dronen and Keough does not teach wherein the semicircle shape has a radius between ten millimeters (mm) and thirty mm.
Paxton teaches a support film (¶ 0057: 115) including a semicircle gripping tab (¶ 0108 & fig. 8: 115b, similar to tabs of Mong, Dronen and/or Keough) with a radius of about ten millimeters (¶ 0132: tab with 9.7mm radius).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the tab of Mong in view of Dronen and Keough with a semicircle shape radius of about ten millimeters, as a means to be easily grasped (Paxton, ¶ 0005).
Furthermore, such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art In re Rose, 105 USPQ 237 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Komasu et al. (foreign patent document WO 2019181732 A1, machine translation provided) teaches a support tape (10) with a peripheral tab (50).
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/BRIAN TURNER/Examiner, Art Unit 2818