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
Election/Restrictions
Applicant’s election without traverse of Group I, Species A in the reply filed on 5/4/26 is acknowledged. Claims 4 and 17-20 are withdrawn from further consideration without traverse pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
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 2, 3 and 11-13 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.
In claims 2 and 11, the limitation “the primary surface of the first wafer” lacks proper antecedent basis.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirose et al. (US 2014/0053974).
As to claim 1, Hirose discloses an apparatus for handling a wafer, comprising: an upper wafer holder 59 (figs 8-10, 59 capable of holding a wafer than can be an upper wafer) having a front surface (upper surface of 59); and a compliant ring 41 (ring is compliant as it is compliant with the lamination device and wafer) mounted around the upper wafer holder and having a front surface (figs 8-10, front surface of compliant ring is upper surface of 41), wherein the front surface of the compliant ring is flush with and extends from the front surface of the upper wafer holder in a radial direction (figs 8-10, discussion of said figures, para 11-20, 52-60).
As to claim 2, Hirose discloses the front surface of the upper wafer holder is configured to suck a primary surface of a first wafer (para 54-55), and wherein an area of the front surface of the upper wafer holder is less than an area of a primary surface of a first wafer (para 54-55, figs 8-10).
As to claim 3, Hirose discloses the front surface of the compliant ring is configured to extend in the radial direction beyond the primary surface of the first wafer, and wherein an area of a combined surface of the front surfaces of the upper wafer holder and the compliant ring is greater than the area of the primary surface of the first wafer (para 54-55, figs 8-10).
As to claim 9, the compliant ring 41 is more compliant than the upper wafer holder 59 as 41 is required and 59 is optional (para 55) and thus less “compliant”.
Claim(s) 1-3 and 10-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (US 2014/0053974).
As to claims 1 and 10, Liu discloses apparatus for handling a wafer, comprising: an upper wafer holder having a front surface configured to hold a first wafer; a compliant ring mounted around the upper wafer holder and having a front surface, wherein the front surface of the compliant ring is flush with and extends from the front surface of the upper wafer holder in a radial direction (flush as the surfaces define the same plane); and a bottom wafer holder having a front surface configured to hold a second wafer (see annotated fig below, para 18-27).
As to claims 2 and 11, Liu discloses the front surface of the upper wafer holder is configured to suck a primary surface of the first wafer, and wherein an area of the front surface of the upper wafer holder is less than an area of the primary surface of the first wafer (fig 2, annotated fig below, para 12-25).
As to claims 3 and 12, Liu discloses the front surface of the compliant ring is configured to extend in the radial direction beyond the primary surface of the first wafer, and wherein an area of a combined surface of the front surfaces of the upper wafer holder and the compliant ring is greater than the area of the primary surface of the first wafer (see annotated fig below, para 18-27).
As to claim 13, Liu discloses the upper wafer holder comprises a first vacuum-assisted chuck, and wherein the bottom wafer holder comprises a second vacuum-assisted chuck (fig 2, annotated fig below, para 12-25).
As to claim 14, Liu discloses the upper wafer holder is configured to move the first wafer in the vertical direction relative to the bottom wafer holder to bond the first wafer and the second wafer (fig 2, annotated fig below, para 12-25).
As to claim 15, Liu discloses the bottom wafer holder is configured to move the second wafer in the vertical direction relative to the upper wafer holder to bond the first wafer and the second wafer (fig 2, annotated fig below, para 12-25).
As to claim 16, Liu discloses an area of the front surface of the upper wafer holder is less than an area of the front surface of the bottom wafer holder, and wherein an area of a combined surface of the front surfaces of the upper wafer holder and the compliant ring is greater than the area of the front surface of the bottom wafer holder (see annotated fig below, para 18-27, boxes represent the area defined as each “an” area of each front surface).
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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.
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) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirose.
As to claims 7-8 Hirose does not expressly disclose the compliant ring 41 extends at least 2.25mm from an edge of the upper wafer holder in the radial direction. However, Hirose discloses the radial width of the ring can be varied based on the design parameters of a wafer to be processed (para 40). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the compliant ring to extend at least 2.25 mm from an edge of the upper wafer holder in the radial direction as such is a design choice obvious to one of ordinary skill in the art.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirose, as applied to claim 1 above, and further in view of Wang et al. (US 2010/0216282).
As to claims 5-6, while Hirose discloses the compliant ring can be made from a resin material, Hirose does not expressly disclose the ring comprises PDMS. Wang discloses an apparatus for handling a wafer, wherein at least a portion of the handling surface comprises PDMS (para 11-19, 37). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the compliant ring of Hirose to comprises PDMS as taught by Wang above as PDMS is biocompatible and non-flammable (para 7)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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