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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/19/2026 has been considered by the examiner.
Response to Amendment
The Amendments filed 10/02/2025 responsive to the Office Action filed 07/02/2025 has been entered. Claims 1 and 5 have been amended. New claims 9-19 have been added. Claims 1-19 are pending in this application.
Response to Arguments
Claim 5 has been amended to address the informality, thus the objection of claim 5 has been withdrawn.
Applicant's arguments, filed 10/02/2025 in pages 6-7, with respect to newly added claims 9-19 have been considered but are not persuasive.
Applicant argues that “New Claims 9 - 17 are directed to a holding table for holding a workpiece, where the holding table includes a resin member, while independent Claim 1 is directed to such a resin member for supporting the workpiece and allowed independent Claim 5 is directed to a dividing apparatus that includes such a resin member for supporting the workpiece.” (page 6)
These arguments are found to be unpersuasive because:
Firstly, the new claim 9 does not include every limitation of claim 1 (See the “Election/Restrictions” below). Secondly, the claim 5 has been indicated to be allowable not because of the resin member but because of the structure between the resin member and the imaging unit (See “Allowable Subject Matter” below).
Applicant's arguments, filed 10/02/2025 in pages 7-8, with respect to the rejection of claim 1 under 102 have been considered. Due to the amendments, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the same reference, Kogure et al. (JPH0536826A), under 103.
Applicant argues that “Although the Kogure et al. reference does not appear to disclose the thickness of the adhesive layer 3, paragraphs [0002] and [0005] - [0007] disclose that the adhesive sheet 1 (which includes substrate 2, adhesive layer 3 and attenuation layer 4), is expanded (i.e., elongated) during an expansion step, Applicant respectfully submits that the adhesive layer 3 must also be extremely thin (like the extremely thin substate 2 and the extremely thin attenuation layer 4) in order to allow for such expansion (elongation).” (page 8)
These arguments are found to be unpersuasive because:
Applicant’s allegation that the adhesive layer 3 must also be extremely thin (like the extremely thin substate 2 and the extremely thin attenuation layer 4) in order to allow for such expansion (elongation) is groundless. As Applicant has acknowledged in the Arguments, Kogure does not disclose the thickness of the adhesive layer 3. If the adhesive layer 3 is extremely thin, rather there is a risk of the adhesive layer tearing. Thus, one would have found it obvious to select the optimum thickness of the adhesive layer by routine experimentation in order to allow the layer to be expanded without tearing.
Election/Restrictions
Newly submitted claims 9-19 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions l (claim1-4) and ll (claims 9-19) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the holding table does not require the resin member having a thickness of at least 10 mm. The subcombination has separate utility such as a window.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
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 9-19 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.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kogure et al. (JPH0536826A_Machine Translation-of record).
With respect to claim 1, Kogure teaches a resin member (“an adhesive sheet”) for supporting a workpiece (“the adhesive sheet for wafer attachment”, Pa [0008]),
wherein the resin member (“an adhesive layer”) has urethane linkages deriving from a reaction between a polyether polyol and an aliphatic isocyanate (“the adhesive sheet for wafer attachment…comprises a substrate and an adhesive layer…a radiation attenuating layer”, “the adhesive layer comprises an adhesive and a radiation-polymerizable compound”, Pa [0008]; “urethane acrylate-based oligomers can also be used as the radiation-polymerizable compound. The urethane acrylate oligomer is obtained by reacting a terminated isocyanate urethane prepolymer obtained by reacting a polyol compound such as a polyester type or polyether type with a polyvalent isocyanate compound”, Pa [0017]).
Kogure does not explicitly disclose the thickness of the adhesive layer 3. Kogure further teaches that since the expansion rate of the adhesive layer in the non-radiation attenuating portion is low and the expansion rate of the adhesive layer in the radiation attenuating portion does not decrease significantly, even when expanding, the adhesive layer in the non-radiation attenuating portion is not preferentially stretched, making it easier to obtain the desired chip spacing (Pa [0040]). Thus, one would have found it obvious to select the optimum thickness of the adhesive layer by routine experimentation in order to allow the layer to be expanded in Kogure’s expanding step without tearing and make it easier to obtain the desired chip spacing, since it has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 2, Kogure as applied to claim 1 above further teaches that as the substrate 2, a substrate having radiation transparency is used (Pa [0011]), by including a radiation-polymerizable compound in the adhesive layer as described above, the adhesive strength can be reduced by irradiating the adhesive layer with radiation after cutting and separating the wafer (Pa [0016]), and the radiation transmittance of such a radiation attenuating layer is 1 to 90% (Pa [0038]). Thus, one would have found it obvious to choose the optimum transmittance of the adhesive sheet for light of a wavelength to be used in order to sufficiently reduce the adhesive strength by irradiating the adhesive layer with radiation after cutting and separating the wafer.
With respect to claim 3, Kogure as applied to claim 2 above further teaches that it is preferable to use a substrate having a Young's modulus of about 10 2 to 10 4 Kg / cm 2 (Pa [0011]) and the Young's modulus of this radiation attenuating layer is 1 x 10 2 to 5 x 10 4 kg/cm and does not affect the elongation of the substrate and adhesive layer in the expanding step (Pa [0038]). Thus, one would have found it obvious to choose the optimum mechanical property of the adhesive sheet in order to prevent the elongation of the substrate and adhesive layer from being affected in the expanding step.
With respect to claim 4, Kogure as applied to claim 3 above further teaches that the aliphatic isocyanate is hexamethylene diisocyanate (“by mixing an isocyanate-based curing agent into the above-mentioned pressure sensitive adhesive, the initial adhesive strength can be set to any desired value...Specific examples of such curing agents include…hexamethylene diisocyanate”, Pa [0031]).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 5, a primary reason why it is deemed novel and non-obvious is that while the closest prior art (Baylis et al., US 2007/0048972) teaches a dividing apparatus (“a positioning and breaking apparatus”) that divides a workpiece formed with division start points along streets, along the streets (“The wafers are broken along a plurality of orthogonal scribe lines arrayed in a grid on the wafer to extend along the streets between the dies to separate the wafer into individual dies.”, Pa [0022]), the dividing apparatus comprising: a resin member (“compressive member 60”) that supports the workpiece (“The breaking mechanism 40 of the invention comprises a vertically moveable compressive member 60 that cooperates with the precision bending bar edge 48 to bend a wafer over the edge to break the wafer along a scribe line.”, Pa [0027] and Fig. 5); a pressing member (“a slide assembly 64”) that presses the workpiece supported by the resin member (“the compressive member 60 may comprise an elongated bar-shaped member mounted on a support block 62 which, in turn, is connected to a slide assembly 64 that is slideably supported for vertical movement on horizontal support 26.”, Pa [0027]); and an imaging unit (“the microscope camera 42”) that images the workpiece (“The microscope camera permits images of the dies on the wafer surface”, Pa [0022]), wherein the resin member has urethane linkages (“The compressive member 60 may comprise a strip or bar of compliant, resilient material, such as urethane”, Pa [0036]), but does not teach or suggest an imaging unit that images the workpiece through the resin member.
Additionally, another closet prior art (Hattori, JP2019/034391A-Machine Translation provided herewith) teaches a cutting device 20 for carrying out the dividing step (Pa [0036]), in the cutting device 20, an imaging means 30 is disposed on the path of the processing feed of the holding table 21 for detecting the area (planned dividing line 2) along which the workpiece 1 should be divided (Pa [0039]), and the dividing step is carried out while the workpiece 1 is held by the holding table 21 via a support jig 40 (Pa [0042]), and the support jig 40 is made of a flexible material such as rubber or urethane, and when the workpiece 1 is divided, the support jig 40 easily sinks into the suction holding surface 21a, thereby reducing the impact on the workpiece 1 (Pa [0044]), but does not teach or suggest an imaging unit that images the workpiece through the resin member.
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 YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached on 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742