DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/29/2025 has been entered.
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 .
Claims Status
The amendment filed 10/01/2025 has been entered. Claims 1-16 and 19-26 are pending. Claims 2-5 and 10-16 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/18/2024.
In the amendment filed 10/01/2025, claims 1, 7, 19, and 22-24 were amended, claims 25-26 were newly added and claims 17-18 were canceled. Note that claim 7 contains an incorrect status identifier because it is labeled “previously presented” although it contains a clearly marked amendment. Applicant is kindly reminded to ensure claim status identifiers are correct.
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 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:
“pressing mechanism” in claim 1, 6-9, 22-23 and 25-26 (“pressing” is the function and “mechanism” is the generic placeholder) interpreted as an air cylinder (p20, ln 4); an air bag and air bag guide [0105]; and equivalents thereof.
“tape advancing device” in claim 1, 6, 8-9, 22 and 25-26 (“tape advancing” is the function and “device” is the generic placeholder) interpreted as a tape advancing roller (48), a nip roller (49) for pressing the polishing tape against the tape advancing roller, and a tape advancing motor (47) for rotating the tape advancing roller [0096], and equivalents thereof.
“translational rotating mechanism” in claim 1, 6, 20, 22 and 25-26 (“configured to cause the polishing head to make a translational rotation motion” is the function and “mechanism” is the generic placeholder) interpreted as a motor (62), a crankshaft (70) secured to the motor, a table (69), a base (71), and a plurality of eccentric joints (65) [0091], and equivalents thereof.
“polishing-head moving mechanism” in claim 6 (“configured to translate the polishing head” is the function and “mechanism” is the generic placeholder) interpreted as a ball screw mechanism (93) and a motor (94) for driving the ball screw mechanism (93) [0127], and equivalents thereof.
“translational rotating mechanism” in claim 7-9, 21, and 23-24 (“configured to cause the substrate holder to make a translational rotation motion” is the function and “mechanism” is the generic placeholder) interpreted as a motor (62), a crankshaft (70) secured to the motor, a table (69), a base (71), and a plurality of eccentric joints (65) (p14, ln 17-20) and the table (69) connected to the substrate holder (10) [0133], and equivalents thereof.
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.
The claim term “polishing blade” is interpreted as a structure that performs polishing by pressing of the polishing tape as explained in the specification [0094]. The structure is not interpreted as a blade or sharpened surface or a structure that itself is abrasively applied to the surface to be polished. This clarification is provided for the record because the art of polishing can include polishing blades that perform cutting or direct abrading of the surface.
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 7-9, 21, and 23-24 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 7, lines 11-13 recite “a translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion in the polishing head moves in a circular orbit relative to the substrate without rotation of the polishing head itself” (emphasis added). This limitation is unclear because the “translational rotating mechanism” is recited as “configure to cause the substrate holder to make a translational rotating motion” (emphasis added) and then defines this as polishing head moves in a circular orbit relative to the substrate. It is unclear how or if the limitation is intended to recite the translational rotating mechanism is to cause the substrate holder to make a movement which is a movement of the polishing head (i.e. it is unclear what is being move). It is unclear if the translational rotating mechanism is moving the substrate holder or the polishing head. As explained in the claim interpretation section above, there is a translational rotating mechanism for the substrate holder [0133] and in a different embodiment a translational rotating mechanism for the polishing head [0091]. The embodiments are not described as being combined and the description of the translational rotating mechanism for the substrate holder [0133] specifically indicates that the polishing head is held stationary. Therefore it is necessary to understand which structure is being moved by the translational rotating mechanism. For purpose of examination on the merits and consistency with the prior claim language and the instant specification [0092], [0133], the instant claim limitation is being interpreted inclusive of “a translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion in which the substrate holdersubstrate holder
Regarding claim 21, lines 2-4 recite “a translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself”. This limitation is unclear because the “translational rotating mechanism” is recited as “configure to cause the substrate holder to make a translational rotating motion” (emphasis added) and then defines this as a movement of the polishing head. It is unclear if the translational rotating mechanism is moving the substrate holder or the polishing head. As explained in the claim interpretation section above, there is a translational rotating mechanism for the substrate holder [0133] and in a different embodiment a translational rotating mechanism for the polishing head [0091]. The embodiments are not described as being combined and the description of the translational rotating mechanism for the substrate holder [0133] specifically indicates that the polishing head is held stationary. Therefore it is necessary to understand which structure is being moved by the translational rotating mechanism. For purpose of examination on the merits, consistency with the prior claim language and the instant specification [0092], [0133], the instant claim limitation is being interpreted inclusive of “a translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the substrate holdersubstrate holder
The remaining claims are included for their dependency from a claim addressed above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 6-8, and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunisawa (prev. presented US 2002/0098787) in view of Doi (prev. presented JP 2003-080451, citing machine translation provided 12/30/2024) and Adams (prev. presented US 6,184,139).
Regarding claim 1, Kunisawa teaches a polishing apparatus (Fig 9) comprising: a substrate holder (30 Fig 3A, 9) configured to hold a substrate and rotate the substrate about an axis of the substrate holder (Fig 3A) [0043] (note the axis is the central point of the rollers which coincides with the center of the substrate), the substrate holder including a plurality of rollers which are rotatable about their own axes (Fig 3A, 9 and [0043]), the plurality of rollers having substrate-holding surfaces (32 Fig 3A, 9) capable of contacting a periphery of the substrate [0043]; a polishing head (7 Fig 9) [0071] configured to bring a polishing tape (51 Fig 8, note that [0066] teaches the cross section of polishing cartridge 8 in Fig 8 is a structure of the polishing device 7), having abrasive particles on one surface [0050], into contact with a back surface of the substrate to polish the back surface (Fig 9 [0071]), the polishing head being disposed below the substrate-holding surfaces (Fig 9, see 7 relative to 32), the polishing head including a polishing blade (73 Fig 8 and 9 “presser” is a blade) configured to press the polishing tape against the back surface of the substrate [0067], and a pressing mechanism configured to push the polishing blade upward (Fig. 8, spring 72 is a functional equivalent [0067]); a tape advancing device configured to advance the polishing tape in its longitudinal direction (feed reel 52 (roller), take-up reel 53 (roller), shaft 62, motor 61 [0053], Fig 8). Kunisawa fails to teach the polishing blade being longer than a radius of the substrate, the polishing blade extends a first distance from the axis of the substrate holder to an outer end of the polishing blade, the first distance being longer than a second distance extending from the axis of the substrate holder to the plurality of rollers, and a translational rotating mechanism configured to cause the polishing head to make a translational rotating motion which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself. Regarding the polishing blade being longer than a radius of the substrate, Kunisawa fails to teach the size of the polishing blade when used in the embodiment of Fig 9. In the same field of endeavor of an apparatus for polishing a substrate using a polishing tape (abstract), Doi demonstrates that when using a polishing tape to polish the flat surface of a substrate (Fig 1, 4), the structure for pressing the tape against the substrate (30 Fig 1, 4, analogous to the blade of Kunisawa) is larger than the radius of the substrate (Fig 1, 4). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the polishing blade when polishing a flat surface of the substrate is sized to be larger than a radius of the substrate because Kunisawa does not limit the size and Doi teaches the size of the pressing pad (30 Fig 1,4) is larger than the radius of the substrate. Regarding the polishing blade extends a first distance from the axis of the substrate holder to an outer end of the polishing blade, the first distance being longer than a second distance extending from the axis of the substrate holder to the plurality of rollers, the polishing blade of Kunisawa in view of Doi as applied in the combination demonstrates a pressing pad (30 Fig 1,4) in which the pad has an outer end positioned at an outer edge of the substrate (see 30 Fig 1,4) whereas the rollers of Kunisawa extend radially inward of the substrate outer edge (see 30 relative to substrate W in Fig 7 and 9), therefore the combination as applied results in a distance from the axis of the substrate holder to an outer end of the polishing blade (i.e. outer edge of substrate) being longer than a distance from the axis of the substrate holder to the plurality of rollers because the rollers have an inner edge that is radially inward of the substrate edge. Regarding the translational rotating mechanism configured to cause the polishing head to make a translational rotating motion which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself, Kunisawa fails to teach the movement structure for the polishing head. In the same field of endeavor of a polishing apparatus (abstract), Adams teaches a translational rotating mechanism configured to cause the polishing head to make a translational rotating motion (rotary bearing 106 Fig 1-2, wave generator 110 including cylindrical sleeve 111 Fig 1-2, offset lower rotary bearing 108 Fig 1-2, drive motor 116 Fig 1-2, pulley 114 Fig 1-2, unnumbered shaft connecting the drive motor 116 to pulley 114 Fig 1-2 and see col 5, ln 25-60, note this is a functional equivalent) which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself (col 5, ln 25-60 note that although rotation motion is mentioned this is not required and any rotation of the cylindrical sleeve is not rotation of the polishing head 102 and 104). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the translational rotating mechanism configured to cause the polishing head to make a translational rotating motion which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself as taught by Adams because Adams teaches the structure allows for movement of the polishing head into position against the substrate (col 2, ln 45-60) and because Adams teaches the arrangement allows for a controlled variety of movement options which allows for customization and flexibility (col 8, ln 56-67).
Regarding claim 6, the combination remains as applied to claim 1 above. Adams as applied in the combination further teaches a polishing head moving mechanism (Fig 1-2) configured to translate the polishing head (col 2, ln 45-60 and col 6, ln 10-30, note oscillation is a form of translation movement). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to include the polishing head moving mechanism as taught by Adams because Adams teaches this structure as part of the arrangement for bring the polishing head into contact with the substrate and because Adams teaches the arrangement allows for a controlled variety of movement options which allows for customization and flexibility (col 8, ln 56-67).
Regarding claim 7, Kunisawa teaches a polishing apparatus (Fig 9) comprising: a substrate holder (30 Fig 3A, 9) configured to hold a substrate and rotate the substrate about an axis of the substrate holder (Fig 3A) [0043] (note the axis is the central point of the rollers which coincides with the center of the substrate), the substrate holder including a plurality of rollers which are rotatable about their own axes (Fig 3A, 9 and [0043]), the plurality of rollers having substrate-holding surfaces (32 Fig 3A, 9) capable of contacting a periphery of the substrate [0043]; a polishing head (7 Fig 9) [0071] configured to bring a polishing tool (presser 73 which presses a polishing tape Fig 9, 10 or 7a, 7b Fig 11), into contact with a back surface of the substrate to polish the back surface (Fig 9 [0071]), the polishing head being disposed below the substrate-holding surfaces (Fig 9, see 7 relative to 32), a pressing mechanism configured to push the polishing tool upward (Fig. 8, spring 72 is a functional equivalent [0067]). Kunisawa fails to teach the polishing blade being longer than a radius of the substrate, a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers, and a translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself. Regarding a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers, the polishing blade of Kunisawa is moveable such that it may be positioned to meet this requirement. Further, In the same field of endeavor of an apparatus for polishing a substrate using a polishing tape (abstract), Doi demonstrates that when using a polishing tape to polish the flat surface of a substrate (Fig 1, 4), the structure for pressing the tape against the substrate (30 Fig 1, 4, analogous to the blade of Kunisawa) is larger than the radius of the substrate (Fig 1, 4). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the polishing blade when polishing a flat surface of the substrate is sized to be larger than a radius of the substrate because Kunisawa does not limit the size and Doi teaches the size of the pressing pad (30 Fig 1,4) is larger than the radius of the substrate. Doi as applied herein demonstrates a pressing pad (30 Fig 1,4) in which the pad has an outer end positioned at an outer edge of the substrate (see 30 Fig 1,4) whereas the rollers of Kunisawa extend radially inward of the substrate outer edge (see 30 relative to substrate W in Fig 7 and 9), therefore the combination as applied results in a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers. Regarding the translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself, Kunisawa fails to teach the movement structure for the substrate holder. In the same field of endeavor of a polishing apparatus (abstract), Adams teaches a translational rotating mechanism configured to cause the substrate holder (150 Fig 5-6) to make a translational rotating motion (rotary bearing 106 Fig 5-6, wave generator 110 including cylindrical sleeve 111 Fig 5-6, offset lower rotary bearing 108 Fig 5-6, drive motor 116 Fig 5-6, pulley 114 Fig 5-6, unnumbered shaft connecting the drive motor 116 to pulley 114 Fig 5-6 and see col 7, ln 40-67, note this is a functional equivalent) which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself (col 7, ln 40-67 note that although rotation motion is mentioned this is not required and any rotation of the cylindrical sleeve is not rotation of the wafer carrier). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself as taught by Adams because Adams teaches the structure allows for movement of the substrate holder into position against the polishing pad (col 2, ln 45-60) and because Adams teaches the arrangement allows for a controlled variety of movement options which allows for customization and flexibility (col 8, ln 56-67). Note that the substrate holder of Kunisawa which is an edge gripping structure may still be moved by a mechanism as shown by Adams.
Regarding claim 8, Kunisawa further teaches the polishing tool includes a polishing tape (51 Fig 8, note that [0066] teaches the cross section of polishing cartridge 8 in Fig 8 is a structure of the polishing device 7), having abrasive particles on one surface [0050], a polishing blade (73 Fig 8 and 9 “presser” is a blade) configured to press the polishing tape against the back surface of the substrate [0067], and a tape advancing device configured to advance the polishing tape in its longitudinal direction (feed reel 52 (roller), take-up reel 53 (roller), shaft 62, motor 61 [0053], Fig 8). Kunisawa further teaches the pressing mechanism coupled to the polishing blade to push the polishing blade upward (Fig. 8, spring 72 is a functional equivalent [0067]). Regarding a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers, the polishing blade of Kunisawa is moveable such that it may be positioned to meet this requirement. Further, Doi as applied in the combination demonstrates a pressing pad (30 Fig 1,4) in which the pad has an outer end positioned at an outer edge of the substrate (see 30 Fig 1,4) whereas the rollers of Kunisawa extend radially inward of the substrate outer edge (see 30 relative to substrate W in Fig 7 and 9), therefore the combination as applied results in a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers.
Regarding claim 22, the combination remains as applied to claim 1 above. Adams as applied in the combination teaches the radius of the orbital movement (Co to Cc see col 5, ln 30-50) is about ¼ of the diameter of the wafer or less (see col 6 ln 55-65 which teaches the diameter of the orbital circle is from ½ the wafer diameter which would make the radius of the orbital circle ¼ the wafer diameter to 0.1 in with a preferred orbit diameter of 1.25 in for 8 and 12 inch wafers). The plurality of rollers as taught by Kunisawa do not extend over more than ¼ of the wafer diameter (i.e. half the wafer radius) and therefore Adams as applied in the combination teaches the radius of the circular orbit is shorter than the distance from the axis of the substrate holder to the plurality of rollers.
Regarding claim 23, the combination remains as applied to claim 7 above. Adams as applied in the combination teaches the radius of the orbital movement (Co to Cc see col 5, ln 30-50) is about ¼ of the diameter of the wafer or less (see col 6 ln 55-65 which teaches the diameter of the orbital circle is from ½ the wafer diameter which would make the radius of the orbital circle ¼ the wafer diameter to 0.1 in with a preferred orbit diameter of 1.25 in for 8 and 12 inch wafers). The plurality of rollers as taught by Kunisawa do not extend over more than ¼ of the wafer diameter (i.e. half the wafer radius) and therefore Adams as applied in the combination teaches the radius of the circular orbit is shorter than the distance from the axis of the substrate holder to the plurality of rollers. Note that Adams has taught the movement mechanisms are the same for the embodiment in which the substrate holder is moved (col 7, ln 40-67).
Claim(s) 9, 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunisawa in view of Doi and Adams as applied to claim 1 and 8 above, and further in view of Kuendig (prev. presented WO02/02270 citing machine translation provided 12/30/2024).
Regarding claim 9, the combination remains as applied to claim 8. The combination fails to teach the polishing blade extends obliquely with respect to the advancing direction of the polishing tape. In the same field of endeavor of a tape polishing apparatus (abstract), Kuendig teaches that as an alternative to the blade being transverse to the advancing direction of the tape (Fig 1, see 12), the blade may be positioned obliquely (position B Fig 5). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify the combination and Kunisawa to include the blade extends obliquely because Kuendig teaches this is a functional alternative (p2 paragraph 3) for the same purpose of pressing a polishing tape to a substrate surface.
Regarding claim 25, the combination as applied to claim 1 fails to teach a polishing tape with a width narrower than a radius of the wafer. Kuendig demonstrates the polishing blade may be arranged to be perpendicular to the roll direction of the polishing tape (Fig 5). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kunisawa to include the polishing blade arranged to extend perpendicularly to the extension direction of the tape because Kuendig demonstrates this is a successful arrangement for pressing a polishing tape (see Fig 5). In such an arrangement, the size of the tape may be selected to be narrower than a radius of the substrate or to be used with a substrate sized such that the tape is narrower than the radius while still allowing for the polishing tape to be pressed along the entire diameter of the substrate as demonstrated by Doi.
Regarding claim 26, the combination as applied to claim 1 fails to teach the polishing blade is arranged obliquely with respect to the direction of travel of the polishing tape. Kuendig demonstrates the polishing blade may be arranged to be obliquely positioned relative to the roll direction of the polishing tape (Fig 5). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kunisawa to include the polishing blade o be obliquely positioned relative to the roll direction of the polishing tape because Kuendig demonstrates this is a successful arrangement for pressing a polishing tape (see Fig 5).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunisawa in view of Doi and Maeda (prev. presented US 2009/0227189).
Regarding claim 19, Kunisawa teaches a polishing apparatus (Fig 9) comprising: a substrate holder (30 Fig 9) configured to hold a substrate and rotate the substrate about an axis of the substrate holder (Fig 3A) [0043] (note the axis is the central point of the rollers which coincides with the center of the substrate), the substrate holder including a plurality of rollers which are rotatable about their own axes (Fig 9 and [0043]), the plurality of rollers having substrate-holding surfaces (32 Fig 9) capable of contacting a periphery of the substrate [0043]; a polishing head (7 Fig 9) [0071] having a polishing blade (73 Fig 8 and 9 “presser” is a blade) configured to bring a polishing tool (51 Fig 8, note that [0066] teaches the cross section of polishing cartridge 8 in Fig 8 is a structure of the polishing device 7), the polishing head being disposed below the substrate-holding surfaces (Fig 9, see 7 relative to 32). Kunisawa fails to teach a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers and fails to teach a Bernoulli chuck configured to attract the back surface of the substrate with a fluid in a non-contact manner, the Bernoulli chuck being disposed below the substrate-holding surfaces. Regarding a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers, in the same field of endeavor of an apparatus for polishing a substrate using a polishing tape (abstract), Doi demonstrates that when using a polishing tape to polish the flat surface of a substrate (Fig 1, 4), the structure for pressing the tape against the substrate (30 Fig 1, 4, analogous to the blade of Kunisawa) is larger than the radius of the substrate and extends to the outer edge of the substrate (Fig 1, 4). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the polishing blade when polishing a flat surface of the substrate is sized to be larger than a radius of the substrate because Kunisawa does not limit the size and Doi teaches the size of the pressing pad (30 Fig 1,4) is larger than the radius of the substrate. Doi as applied herein demonstrates a pressing pad (30 Fig 1,4) in which the pad has an outer end positioned at an outer edge of the substrate (see 30 Fig 1,4) whereas the rollers of Kunisawa extend radially inward of the substrate outer edge (see 30 relative to substrate W in Fig 7 and 9), therefore the combination as applied results in a distance from the axis of the substrate holder to an outer end of the polishing blade being longer than a distance from the axis of the substrate holder to the plurality of rollers (because that distance is less than the distance to the edge of the substrate). Regarding a Bernoulli chuck configured to attract the back surface of the substrate with a fluid in a non-contact manner, the Bernoulli chuck being disposed below the substrate-holding surfaces, in the same field of endeavor of a polishing apparatus (abstract), Maeda teaches that around the polishing blade (20 Fig 5) the apparatus includes Bernoulli chucks (41 Fig 5) [0047] configured to attract the surface of the substrate with a fluid in a non-contact manner [0046-0047]. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify the polishing head of Kunisawa to include the Bernoulli chucks as taught by Maeda because Maeda teaches this allows for support of the substrate from the polishing side [0047]. Note that in the combination as applied the polishing blade of Kunisawa is below the substrate and substrate holders and therefore the Bernoulli chucks are also disposed below the substrate and substrate holders.
Claim(s) 20-21 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunisawa in view of Doi and Maeda as applied to claim 19 above, and further in view of Adams.
Regarding claim 20, the combination remains as applied to claim 19 above. Kunisawa fails to teach a translational rotating mechanism configured to cause the polishing head to make a translational rotating motion which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself. In the same field of endeavor of a polishing apparatus (abstract), Adams teaches a translational rotating mechanism configured to cause the polishing head to make a translational rotating motion (rotary bearing 106 Fig 1-2, wave generator 110 including cylindrical sleeve 111 Fig 1-2, offset lower rotary bearing 108 Fig 1-2, drive motor 116 Fig 1-2, pulley 114 Fig 1-2, unnumbered shaft connecting the drive motor 116 to pulley 114 Fig 1-2 and see col 5, ln 25-60, note this is a functional equivalent) which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself (col 5, ln 25-60 note that although rotation motion is mentioned this is not required and any rotation of the cylindrical sleeve is not rotation of the polishing head 102 and 104). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the translational rotating mechanism configured to cause the polishing head to make a translational rotating motion which is a movement of the polishing head in a circular orbit without rotation of the polishing head itself as taught by Adams because Adams teaches the structure allows for movement of the polishing head into position against the substrate (col 2, ln 45-60) and because Adams teaches the arrangement allows for a controlled variety of movement options which allows for customization and flexibility (col 8, ln 56-67).
Regarding claim 21, the combination remains as applied to claim 19 above. Kunisawa fails to teach a translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself. In the same field of endeavor of a polishing apparatus (abstract), Adams teaches a translational rotating mechanism configured to cause the substrate holder (150 Fig 5-6) to make a translational rotating motion (rotary bearing 106 Fig 5-6, wave generator 110 including cylindrical sleeve 111 Fig 5-6, offset lower rotary bearing 108 Fig 5-6, drive motor 116 Fig 5-6, pulley 114 Fig 5-6, unnumbered shaft connecting the drive motor 116 to pulley 114 Fig 5-6 and see col 7, ln 40-67, note this is a functional equivalent) which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself (col 7, ln 40-67 note that although rotation motion is mentioned this is not required and any rotation of the cylindrical sleeve is not rotation of the wafer carrier). It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Kunisawa to include the translational rotating mechanism configured to cause the substrate holder to make a translational rotating motion which is a movement of the substrate holder in a circular orbit without rotation of the substrate holder itself as taught by Adams because Adams teaches the structure allows for movement of the substrate holder into position against the polishing pad (col 2, ln 45-60) and because Adams teaches the arrangement allows for a controlled variety of movement options which allows for customization and flexibility (col 8, ln 56-67). Note that the substrate holder of Kunisawa which is an edge gripping structure may still be moved by a mechanism as shown by Adams.
Regarding claim 24, the combination remains as applied to claim 21 above. Adams as applied in the combination teaches the radius of the orbital movement (Co to Cc see col 5, ln 30-50) is about ¼ of the diameter of the wafer or less (see col 6 ln 55-65 which teaches the diameter of the orbital circle is from ½ the wafer diameter which would make the radius of the orbital circle ¼ the wafer diameter to 0.1 in with a preferred orbit diameter of 1.25 in for 8 and 12 inch wafers). The plurality of rollers as taught by Kunisawa do not extend over more than ¼ of the wafer diameter (i.e. half the wafer radius) and therefore Adams as applied in the combination teaches the radius of the circular orbit is shorter than the distance from the axis of the substrate holder to the plurality of rollers. Note that Adams has taught the movement mechanisms are the same for the embodiment in which the substrate holder is moved (col 7, ln 40-67).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9-10 of U.S. Patent No. 11,865,665. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 9-10 include all the limitations of instant claims 7-9. Note that although a species restriction was made in the instant application and in the application (16/163,070) which was issued as US 11,865,665, the instant claims 7-9 are generic to the elected species as evidence by the inclusion of the same claim text in claims 11-13 (citing as the original claim numbers during examination) of application 16/163,070. If the claims are amended to not be generic to the previously examined species and the elected species, the double patenting rejection will be withdrawn.
Response to Arguments
Applicant's arguments filed 10/01/2025, hereinafter reply, have been fully considered but they are not persuasive.
Regarding the rejection of the claims under 35 USC 112(b), the amendment to claim 7 has not clarified the issue and no amendment was made to claim 21. Applicant is kindly requested to consider the suggested language or to contact Examiner to clarify the issue if applicant’s representative is still unsure about the clarity issue that is present with the claims.
Applicant argues (reply p8) that Kunisawa and Doi do not teach the limitations regarding the distance from the axis of the substrate holder to an outer end of the polishing blade being larger than the distance from the axis of the substrate holder to the plurality of rollers. As indicated above, the combination does teach this because the blade of the combination contacts the edge of the substrate whereas the substrate holder is radially inward of the edge of the substrate. Therefore this argument is not persuasive. Further Doi teaches a structure analogous to the recited blade unless applicant is relying on a special definition that has not been provided. As indicated above in the claim interpretation section, there is no indication that the polishing blade has a sharpened edge or directly acts on the substrate. Applicant argues (reply p8) that the claims implicitly requires that the blade extends beyond the edge of the wafer. Examiner notes that this is not required by the claims because the holder rollers extend radially inward of the substrate edge as explained above. Regarding the argument Kunisawa is for edge polishing (reply p9), there are cited embodiments of Kunisawa that polish the under surface of the substrate and therefore a complete redesign is not required as applicant’s arguments suggest. The arguments regarding the analogous limitations of claim 7 (reply p10-11) are the same as those for claim 1 which have been addressed above. Regarding claim 19, the arguments rely on the arguments presented regarding the analogous limitation amendments (reply p9) which have been addressed above. The arguments regarding the dependent claims rely on the alleged failing of the art to address the new limitations of the independent claims which has been addressed above. Regarding the double patenting rejection (reply p12), the analysis has been considered in view of the amendments and the double patenting rejection remains because the claims have not been amended to claim a distinct species from the species of the allowed patent. For all of these reasons the arguments are not persuasive as to the allowability of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2011/0256811 teaches a polishing tape (Fig 2)
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