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 .
DETAILED ACTION
Currently, claims 1-4 are pending and examined below.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement (IDS)
Two information disclosure statements submitted on 09/28/2023 ("09-28-23 IDS") and on 05/12/2025 (“05-12-25 IDS”) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the 09-28-23 IDS and 05-12-25 IDS are being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: METHOD OF PROCESSING WAFER USING A JOINT MEMBER BREAK STEP OF BREAKING THE JOINT MEMBER BY APPLYING A LASER BEAM THROUGH A SUPPORT SUBSTRATE
Claim Objections
Claims 1-4 are objected to because of the following informalities:
Independent claim 1 is objected to, because “has been ground” should read “has been grounded”. Appropriate correction is required.
Claims 2-4 are objected to for depending on the independent claim 1 that has been objected to.
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.
Claims 16-20 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.
Section 2173.02.I. of the MPEP provides the following guidance on how pre-issuance claims under examination are construed differently than patented claims:
Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. While "absolute precision is unattainable" in patented claims, the definiteness requirement "mandates clarity." Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 134 S. Ct. 2120, 2129, 110 USPQ2d 1688, 1693 (2014). A court will not find a patented claim indefinite unless the claim interpreted in light of the specification and the prosecution history fails to "inform those skilled in the art about the scope of the invention with reasonable certainty." Id. at 1689.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
The Office does not interpret claims when examining patent applications in the same manner as the courts. In re Packard, 751 F.3d 1307, 1312, 110 USPQ2d 1785, 1788 (Fed. Cir. 2014); In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Office construes claims by giving them their broadest reasonable interpretation during prosecution in an effort to establish a clear record of what the applicant intends to claim. Such claim construction during prosecution may effectively result in a lower threshold for ambiguity than a court's determination. Packard, 751 F.3d at 1323-24, 110 USPQ2d at 1796-97 (Plager, J., concurring). However, applicant has the ability to amend the claims during prosecution to ensure that the meaning of the language is clear and definite prior to issuance or provide a persuasive explanation (with evidence as necessary) that a person of ordinary skill in the art would not consider the claim language unclear. In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)( claims are given their broadest reasonable interpretation during prosecution "to facilitate sharpening and clarifying the claims at the application stage"); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Here, the independent claim 1 is indefinite, because it is unclear what is meant by “transferring the wafer to the transfer member” in the step of “a transferring step of, after the joint member breaking step has been carried out, peeling off the support substrate from the wafer and transferring the wafer to the transfer member” in combination of the previous step of a “transfer member affixing step of affixing a transfer member to the reverse side of the wafer that has been ground in the grinding step” as the transfer member has already been affixed to the reverse side of the wafer a shown in Fig. 9. Fig. 12 still shows the wafer that remains affixed to the transfer member 32.
For the purpose of advancing the examination of the instant application, the last step of “a transferring step of, after the joint member breaking step has been carried out, peeling off the support substrate from the wafer and transferring the wafer to the transfer member” has not been considered in light of the indefiniteness issue above.
Claims 2-4 are indefinite, because they depend from the indefinite claim 1.
Claim Rejections - 35 USC § 1021
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pub. No. US 2019/0057891 A1 to Marinov et al. ("Marinov").
Fig. 16 of Marinov has been provided to support the rejection below:
PNG
media_image2.png
654
462
media_image2.png
Greyscale
Regarding independent claim 1, Marinov teaches a method of processing a wafer, comprising:
a composite substrate forming step of joining a face side of a wafer wafer with patterns formed in respective areas demarcated on the face side by a plurality of projected dicing lines established thereon (step 414) and a surface of a support substrate mask (step 416) to each other with a joint member (interface of mask/wafer) interposed therebetween (para [0230] - “The masking film can be formed in accordance with known semiconductor techniques and materials such as by applying photoresists, to the wafer. The thickness and composition of the masking film material are selected in view of anticipated processing steps downstream from the wafer fabrication.”);
a grinding step (see step 416) of, after the composite substrate forming step has been carried out, grinding a reverse side of the wafer of the composite substrate to thin down the wafer to a finished thickness (para [0232] - “Wafer preparation in the process 410 can include forming a thin wafer (416-418), for example, a thin wafer having a thickness of 50 μm or less, 40 μm or less, 30 μm or less, 20 μm or less, 10 μm or less, and 5 μm or less.”; para [0233] - “In some instances, the wafer can be thinned to a thickness of approximately 50 μm using a mechanical grinding technique such as backgrinding.”);
a transfer member affixing step (see step 420) of affixing a transfer member glass carrier to the reverse side of the wafer wafer that has been ground in the grinding step;
a joint member breaking step of breaking the joint member by applying a laser beam laser pulse having a wavelength UV transmittable through the support substrate mask and absorbable by the joint member to the composite substrate from another surface side of the support substrate mask; and
a transferring step of, after the joint member breaking step has been carried out, peeling off the support substrate from the wafer and transferring the wafer to the transfer member (In light of the pending indefiniteness issue as noted above, this last step has not been considered in view of Marinov).
Regarding claim 2, Marinov teaches a dividing step of, before the joint member breaking step is carried out, dividing the wafer wafer along the projected dicing lines (see step 414 or see Fig. 11 or Fig. 12).
Regarding claim 3, Marinov teaches a bending moment applying step (see step 424; see also Fig. 15) of, after the joint member break step has been carried out, applying a bending moment to a region of the composite substrate that includes an outer circumferential portion thereof.
Regarding claim 4, Marinov teaches the bending moment applying step is repeatedly carried out (Fig. 16 at step 424 shows more than one die that is be released by the laser pulse).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pub. No. US 2022/0406602 A1 to Tanoue et al.
Pub. No. US 2022/0059386 A1 to Fujikawa et al.
Pub. No. US 2020/0144095 A1 to Mikami et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JUNG whose telephone number is (408) 918-7554. The examiner can normally be reached on 8:30 A.M. to 7 P.M.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached on (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL JUNG/Primary Examiner, Art Unit 2817 21 November 2025
1 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