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
Status of the Claims
Applicant’s election, without traverse, of Group I, claims 1-15 in the reply filed on March 24th, 2026 is acknowledged. Non-elected invention of Group II, claims 16-20 have been withdrawn from consideration. Claims 1-20 are pending.
Action on merits of Group I, claims 1-15 as follows.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 07th, 2023 has been considered by the examiner.
Drawings
The drawings filed on 12/07/2023 are acceptable.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Harada (US 2006/0102290, hereinafter as Hara ‘290) in view of Takagi (US 2017/0285491, hereinafter as Taka ‘491).
Regarding Claim 1, Hara ‘290 teaches an alignment apparatus comprising:
a support substrate (Fig. 1, (1); [0043]) having a first alignment mark (3; [0044]) formed thereon; and
a wafer (10; [0044]) mounted on the support substrate as aligned to the first alignment mark, wherein the first alignment mark includes: a first mark extending in a first direction; a second mark extending in a second direction and intersecting the first mark at a side of the first mark.
Thus, Hara ‘290 is shown to teach all the features of the claim with the exception of explicitly the limitations: “a third mark extending in the second direction and intersecting the first mark at another side of the first mark”.
Taka ‘491 teaches a third mark (Fig. 3, (T_Annotated); [0018]) extending in the second direction and intersecting the first mark at another side of the first mark (F_Annotated).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Hara ‘290 by having a third mark extending in the second direction and intersecting the first mark at another side of the first mark for the purpose of reducing of a mounting error of an article (see para. [0005]) in order to provide at least one of the performance, quality, productivity, and production cost of the article, as compared to conventional methods (see para. [0035]) as suggested by Taka ‘491.
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Fig. 1 (Hara ‘290)
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[AltContent: textbox (F)] Fig. 3 (Taka ‘491_Annotated)
Regarding Claim 2, Taka ‘491 teaches a distance between the second mark and the third mark (PM) is less than a length of a flat zone of the wafer in the first direction (see Fig. 3).
Further, it has been held to be within the general skill of a worker in the art to select a distance between the second mark and the third mark is less than a length of a flat zone of the wafer in the first direction on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
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A person of ordinary skills in the art is motivated to select a distance between the second mark and the third mark is less than a length of a flat zone of the wafer in the first direction when this improves the productivity, and production cost of the devices.
Regarding Claim 3, Hara ‘290 and Taka ‘491 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a length of the first mark in the first direction is greater than a length of a flat zone of the wafer in the first direction”.
However, it has been held to be within the general skill of a worker in the art to select a length of the first mark in the first direction is greater than a length of a flat zone of the wafer in the first direction on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
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A person of ordinary skills in the art is motivated to select a length of the first mark in the first direction is greater than a length of a flat zone of the wafer in the first direction when this improves the productivity, and production cost of the devices.
Regarding Claim 4, Taka ‘491 teaches a camera (TTL detector (15/17); [0019]) that photographs the first alignment mark and the wafer; and a controller (16; [0017]) that aligns a position of the wafer by using a photographed image of the camera (see Fig. 1).
Dependent claim 4 contains functional limitations “photographs the first alignment mark and the wafer” and “aligns a position of the wafer by using a photographed image of the camera” (emphasis added). According to MPEP 2173(05) g. "the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)”. In the instant case, “photographs the first alignment mark and the wafer” and “aligns a position of the wafer by using a photographed image of the camera” are nothing else than the result achieved by the invention.
Regarding Claim 5, Taka ‘491 teaches the controller (16; [0017]).
Dependent claim 5 contains functional limitations: “moves at least one of the wafer and the support substrate such that the second mark and the third mark overlap a flat zone of the wafer in the second direction” (emphasis added). According to MPEP 2173(05) g. "the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)”. In the instant case, “moves at least one of the wafer and the support substrate such that the second mark and the third mark overlap a flat zone of the wafer in the second direction” are nothing else than the result achieved by the invention.
Regarding Claim 6, Taka ‘491 teaches the controller (16; [0017]).
Dependent claim 6 contains functional limitations: “moves at least one of the wafer and the support substrate such that a distance between the second mark and a flat zone of the wafer and a distance between the third mark and the flat zone of the wafer are within a range and substantially the same” (emphasis added). According to MPEP 2173(05) g. "the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)”. In the instant case, “moves at least one of the wafer and the support substrate such that a distance between the second mark and a flat zone of the wafer and a distance between the third mark and the flat zone of the wafer are within a range and substantially the same” are nothing else than the result achieved by the invention.
Claims 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hara ‘290 and Taka ‘491 as applied to claim 4 above, and further in view of Spath (US 2015/0276638, hereinafter as Spat ‘638).
Regarding Claim 7, Taka ‘491 teaches the controller (16; [0017]).
Hara ‘290 and Taka ‘491 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a mask including a second alignment mark, wherein the controller aligns a position of the mask by using the first alignment mark and the second alignment mark”.
Spat ‘638 teaches a mask (Fig. 1B, (40); [0007]) including a second alignment mark (45/46; [0007]), and the controller (120; [0047]) aligns a position of the mask by using the first alignment mark and the second alignment mark (see para. [0010]).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Hara ‘290 and Taka ‘491 by having a mask including a second alignment mark, wherein the controller aligns a position of the mask by using the first alignment mark and the second alignment mark for the purpose of for aligning one or more additional patterns with reference to a first pattern (see para. [0035]) as suggested by Spat ‘638.
Dependent claim 7 contains functional limitations: “aligns a position of the mask by using the first alignment mark and the second alignment mark” (emphasis added). According to MPEP 2173(05) g. "the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)”. In the instant case, “aligns a position of the mask by using the first alignment mark and the second alignment mark” are nothing else than the result achieved by the invention.
Regarding Claim 8, Spat ‘638 teaches the second alignment mark includes: a 2ath alignment mark that aligns with an area of the first mark; and a 2bth alignment mark that aligns with another area of the first mark (see Fig. 1B).
Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a cross or a plus sign shape in a plan view”.
However, it has been held to be within the general skill of a worker in the art to select a cross or a plus sign shape in a plan view for the second alignment mark on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). A person of ordinary skills in the art is motivated to select a cross or a plus sign shape in a plan view when this improves the productivity, and production cost of the devices.
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Regarding Claim 9, Spat ‘638 teaches the 2ath alignment mark includes first alignment keys located to surround the area of the first mark and a portion of the second mark in a plan view (see Fig. 1B)
Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “the first alignment keys have a “L” shape, a shape obtained by rotating the “L” shape by 90 degrees, a shape obtained by rotating the “L” shape by 180 degrees, and a shape obtained by rotating the “L” shape by 270 degrees in a plan view”.
However, it has been held to be within the general skill of a worker in the art to select the first alignment keys have a “L” shape, a shape obtained by rotating the “L” shape by 90 degrees, a shape obtained by rotating the “L” shape by 180 degrees, and a shape obtained by rotating the “L” shape by 270 degrees in a plan view on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). A person of ordinary skills in the art is motivated to select the first alignment keys have a “L” shape, a shape obtained by rotating the “L” shape by 90 degrees, a shape obtained by rotating the “L” shape by 180 degrees, and a shape obtained by rotating the “L” shape by 270 degrees in a plan view when this improves the productivity, and production cost of the devices.
Regarding Claim 10, Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a distance between the first alignment keys in the first direction is greater than a width of the second mark in the first direction, and a distance between the first alignment keys in the second direction is greater than a width of the first mark in the second direction”.
However, it has been held to be within the general skill of a worker in the art to select a distance between the first alignment keys in the first direction is greater than a width of the second mark in the first direction, and a distance between the first alignment keys in the second direction is greater than a width of the first mark in the second direction on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. A person of ordinary skills in the art is motivated to select a distance between the first alignment keys in the first direction is greater than a width of the second mark in the first direction, and a distance between the first alignment keys in the second direction is greater than a width of the first mark in the second direction when this improves the productivity, and production cost of the devices.
Regarding Claim 11, Spat ‘638 teaches the 2bth alignment mark includes second alignment keys to be located to surround the another area of the first mark and a portion of the third mark in a plan view (see Fig. 1B).
Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “the second alignment keys have a “L” shape, a shape obtained by rotating the “L” shape by 90 degrees, a shape obtained by rotating the “L” shape by 180 degrees, and a shape obtained by rotating the “L” shape by 270 degrees in a plan view”.
However, it has been held to be within the general skill of a worker in the art to select the second alignment keys have a “L” shape, a shape obtained by rotating the “L” shape by 90 degrees, a shape obtained by rotating the “L” shape by 180 degrees, and a shape obtained by rotating the “L” shape by 270 degrees in a plan view on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). A person of ordinary skills in the art is motivated to select the second alignment keys have a “L” shape, a shape obtained by rotating the “L” shape by 90 degrees, a shape obtained by rotating the “L” shape by 180 degrees, and a shape obtained by rotating the “L” shape by 270 degrees in a plan view when this improves the productivity, and production cost of the devices.
Regarding Claim 12, Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a distance between the second alignment keys in the first direction is greater than a width of the third mark in the first direction, and a distance between the second alignment keys in the second direction is greater than a width of the first mark in the second direction”.
However, it has been held to be within the general skill of a worker in the art to select a distance between the second alignment keys in the first direction is greater than a width of the third mark in the first direction, and a distance between the second alignment keys in the second direction is greater than a width of the first mark in the second direction on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. A person of ordinary skills in the art is motivated to select a distance between the second alignment keys in the first direction is greater than a width of the third mark in the first direction, and a distance between the second alignment keys in the second direction is greater than a width of the first mark in the second direction when this improves the productivity, and production cost of the devices.
Regarding Claim 13, Spat ‘638 teaches a third alignment mark (Fig. 2, (164); [0052]).
Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “located at an upper side of a flat zone of the wafer”.
However, it has been held to be within the general skill of a worker in the art to select the third alignment mark located at an upper side of a flat zone of the wafer on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. A person of ordinary skills in the art is motivated to select the third alignment mark located at an upper side of a flat zone of the wafer when this improves the productivity, and production cost of the devices.
Regarding Claim 14, Spat ‘638 teaches a third alignment mark (Fig. 2, (164); [0052])
Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a 3ath alignment mark located at an upper side of the flat zone and having a cross or a plus sign shape in a plan view; and a 3bth alignment mark located at another upper side of the flat zone and having a cross or a plus sign shape in a plan view”.
However, it has been held to be within the general skill of a worker in the art to select a 3ath alignment mark located at an upper side of the flat zone and having a cross or a plus sign shape in a plan view; and a 3bth alignment mark located at another upper side of the flat zone and having a cross or a plus sign shape in a plan view on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. A person of ordinary skills in the art is motivated to select a 3ath alignment mark located at an upper side of the flat zone and having a cross or a plus sign shape in a plan view; and a 3bth alignment mark located at another upper side of the flat zone and having a cross or a plus sign shape in a plan view when this improves the productivity, and production cost of the devices.
Regarding Claim 15, Spat ‘638 teaches the controller (120; [0047]).
Hara ‘290, Taka ‘491 and Spat ‘638 are shown to teach all the features of the claim with the exception of explicitly the limitations: “aligns the wafer by using a distance between the first alignment mark and the third alignment mark and positions of the first alignment mark and the third alignment mark”.
However, it has been held to be within the general skill of a worker in the art to align the wafer by using a distance between the first alignment mark and the third alignment mark and positions of the first alignment mark and the third alignment mark on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. A person of ordinary skills in the art is motivated to align the wafer by using a distance between the first alignment mark and the third alignment mark and positions of the first alignment mark and the third alignment mark when this improves the productivity, and production cost of the devices.
Dependent claim 15 contains functional limitations: “aligns the wafer by using a distance between the first alignment mark and the third alignment mark and positions of the first alignment mark and the third alignment mark” (emphasis added). According to MPEP 2173(05) g. "the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)”. In the instant case, “aligns the wafer by using a distance between the first alignment mark and the third alignment mark and positions of the first alignment mark and the third alignment mark” are nothing else than the result achieved by the invention.
Examiner’s Note
Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants' definition which is not specifically set forth in the claims. See MPEP 2111, 2123, 2125, 2141.02 VI, and 2182.
Examiner has cited particular paragraph numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. See MPEP 2141.02 VI.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to further show the state of the art with respect to semiconductor devices:
Yu et al. (US 2019/0033706 A1)
Ryu et al. (US 2017/0256753 A1)
Woerz et al. (US 2015/0179584 A1)
Ghinovker (US 2007/0008533 A1)
Kitayama (US 2005/0095116 A1)
For applicant’s benefit portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection it is noted that the PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS. See MPEP 2141.02 VI.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DZUNG T TRAN whose telephone number is (571) 270-3911. The examiner can normally be reached on M-F 8 AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Purvis can be reached on (571) 272-1236. 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.
/DZUNG TRAN/
Primary Examiner, Art Unit 2893
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