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 .
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(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 30 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “visual appearance” in claim 30is a relative term which renders the claim indefinite. The term “visual appearance” is not defined by the claim, 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.
As understood by the Examiner, ‘visual appearance’ includes observations by humans, and objects may have different visual appearance to different people based on various types of impairment, different observation apparatus and/or lighting conditions. Since the claims provide no particular standard for establishing a difference in visual appearance, the scope of claim 30 is indefinite.
For the purpose of compact prosecution, the Examiner has interpreted the term ‘visual appearance’ to be consistent with the cited prior art.
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, 16-19, 23-25 and 27-30 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) and Mihara (PG Pub. No. US 2019/0111536 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 support tape from the wafer (¶ 0021: tabs facilitate removal of 208 from 202).
Mong fails to teach the tabs are integrally formed from the support tape to form a single, unitary piece, and 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).
Mong in view of Dronen fails to teach the tabs are integrally formed from the support tape to form a single, unitary piece.
Mihara teaches a wafer support tape (¶ 0024: composite element 1/2, configured to support wafer W) including an integrally formed tab (¶ 0038: outward projection 2a) formed from the support tape (fig. 7: 2a integrally formed from 1/2), the tab defining a gripping region for removal of the support tape from a wafer (¶ 0038 & fig. 7: 2a defines gripping region for removal of ½ from W).
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 of Mong in view of Dronen with integral tabs, as a means to easily separate the support substrate protective member from the front surface of the support substrate and to lift up the side of the outer peripheral portion of the workpiece W (Mihara, ¶ 0038).
Regarding claim 2, Mong in view of Dronen and Mihara 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 and Mihara 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 and Mihara 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 gripping means integrally 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).
Mong in view of Dronen does not teach the gripping means are integral.
Mihara teaches a wafer support tape (¶ 0024: composite element 1/2, configured to support wafer W) including an integrally formed tab (¶ 0038: outward projection 2a) formed from the support tape (fig. 7: 2a integrally formed from 1/2), the tab defining a gripping region for removal of the support tape from a wafer (¶ 0038 & fig. 7: 2a defines gripping region for removal of ½ from W).
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 of Mong in view of Dronen with integral tabs, as a means to easily separate the support substrate protective member from the front surface of the support substrate and to lift up the side of the outer peripheral portion of the workpiece W (Mihara, ¶ 0038).
Regarding claim 17, Mong in view of Dronen and Mihara teaches the back grinding support means of claim 16, wherein the gripping means is a first gripping means and wherein the back 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 and Mihara 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 and Mihara 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 23, Mong in view of Dronen and Mihara 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 a 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 integrally extending from an edge of the first portion and forming a single, unitary piece.
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).
Mong in view of Dronen fails to teach the tab is integral and forms a single, unitary piece.
Mihara teaches a wafer support tape (¶ 0024: composite element 1/2, configured to support wafer W) including an integrally formed tab (¶ 0038: outward projection 2a) formed from the support tape (fig. 7: 2a integrally formed from 1/2), the tab defining a gripping region for removal of the support tape from a wafer (¶ 0038 & fig. 7: 2a defines gripping region for removal of ½ from W).
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 of Mong in view of Dronen with integral tabs, as a means to easily separate the support substrate protective member from the front surface of the support substrate and to lift up the side of the outer peripheral portion of the workpiece W (Mihara, ¶ 0038).
Regarding claim 25, Mong in view of Dronen and Mihara 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 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 and Mihara 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).
Regarding claim 29, Mong in view of Dronen and Mihara teaches the support tape of claim 1, wherein the tab includes an indicator that enables a sensor to detect the tab (Dronen, fig. 4: 480 includes a visually detectable tab, and/or Mihara, fig. 7: 2a extends from 1/2 in a visually detectable manner).
Regarding claim 30, Mong in view of Dronen and Mihara teaches the back grinding support means of claim 16, wherein the center region has a different visual appearance than the gripping means when the back grinding support means is adhered to the wafer (Mihara, fig. 7: center region of 2 visually obscured by 1 when 1/2 adhered to W).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mong in view of Dronen and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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 and Mihara 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, Mihara and Keough as applied to claims 4 and 21 above, and further in view of Paxton et al. (PG Pub. No. US 2004/0020133 A1).
Regarding claims 5 and 21, Mong in view of Dronen, Mihara 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, Mihara 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, Mihara 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).
Response to Arguments
Applicant’s arguments, see page 5, filed 6/22/2026, with respect to the formal claim objection(s) and 35 USC § 112(d) rejections of claims 1, 20 and 24 have been fully considered and are persuasive. Accordingly, the formal claim objection(s) and 35 USC § 112(d) rejections of claims 1, 20 and 24 have been withdrawn.
Applicant’s arguments with respect to the 35 USC § 103 rejections of claims 1-7, 16-19, 22-25 and 27-30 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN TURNER whose telephone number is (571)270-5411. The examiner can normally be reached M-F 8am-5pm.
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/BRIAN TURNER/Examiner, Art Unit 2818
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