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 .
Response to Arguments
Applicant’s arguments, see remarks, filed 05/19/2026, with respect to the rejection(s) of claim(s) 1, 2, 4, 5 under U.S.C. 103 have been fully considered and are persuasive, applicant’s amendments to the claims overcome the Suzuki reference and the U.S.C. 112 rejections. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kitano (US20220344149).
See below for updated rejections.
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.
Claim(s) 1, 2, 4, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 2021/0291316) in view of Kitano (US 20220344149) and Schneegans et al. (US 6752694), hereinafter ‘Schneegans’
Suzuki discloses:
1. A workpiece grinding method for grinding a back surface of a workpiece formed on a front surface thereof with a device region and a peripheral surplus region surrounding the device region, to form a circular recess and an annular projecting part surrounding the circular recess (paragraph [0001]), the workpiece grinding method comprising:
a holding step of holding the workpiece on a holding surface of a chuck table (chuck table 6, paragraph [0031], S20 “HOLDING STEP”);
a first grinding step of grinding a part of the back surface corresponding to the device region of the workpiece held by the chuck table, by use of a first grinding wheel to form a first circular recess and an annular projecting part in the back surface of the workpiece (S30 “OBLIQUE GRINDING STEP” is interpreted to be a first grinding step, discussed in paragraph [0033]-[0036]); and
a second grinding step of grinding at least a bottom surface of the first circular recess after the first grinding step (S50 “ORDINARY GRINDING STEP”, is interpreted to be a second grinding step, discussed in paragraph [0039]-[0040]),
wherein, in the first grinding step, the bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a radial direction from a center to a circumference of the first circular recess (see Fig. 4a, 4b, bottom surface 11c2 has differing thickness in the radial direction after the oblique grinding step S30 ), and,
in the second grinding step, the bottom surface of the first circular recess is ground to have a uniform thickness (see Fig. 6, circular recess 11c2 is ground to have a uniform thickness).
Suzuki does not disclose wherein, in the first grinding step, the bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a radial direction from a center to a circumference of the first circular recess such that a thickness of the bottom surface at the center and at the circumference of the first circular recess is greater than or less than a thickness of the bottom surface between the center and the circumference of the first circular recess, and;
and does not disclose use of a second grinding wheel including grindstones having a particle diameter smaller than that of the first grinding wheel for the second grinding step.
However, Kitano discloses a workpiece grinding method similar to Suzuki and the present application and therefore constitutes analogous art. Kitano discloses a first grinding step S101 that is equivalent to Suzuki’s first grinding step (see Suzuki Fig. 4A and Kitano Fig. 7a, both workpieces are held on a chuck table and grinded at an angle such that he bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a radial direction from a center to a circumference of the first circular recess). Kitano discloses another obvious equivalent embodiment for grinding step S101 seen in Kitano Fig. 11b which shows wherein, in the first grinding step, the bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a radial direction from a center to a circumference of the first circular recess such that a thickness of the bottom surface at the center and at the circumference of the first circular recess is greater than or less than a thickness of the bottom surface between the center and the circumference of the first circular recess (Fig. 11b shows center having thickness T10 and circumference of bottom surface having thickness T11 which are both at least greater than the thickness T12 that is located at bottom surface between the center and the circumference of the first circular recess). The first grinding step S101 that results in Fig. 11b and Fig. 7a-7b are obvious equivalent grinding steps as discussed by Kitano paragraph [0049] and [0071], and Fig. 7a is an obvious equivalent/analogous grinding step to Suzuki’s Fig. 4a grinding step because they both show angled grinding that results in similar bottom surfaces that are angled towards the center, therefore, Kitano’s Fig. 11b grinding step is an obvious equivalent to Suzuki’s Fig. 4a grinding step and therefore able to be substituted with one another to yield only expected results.
Since simple substitution is an exemplary rationale that supports a conclusion of obviousness, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the method of Suzuki to have used a first grinding step that results in having the bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a radial direction from a center to a circumference of the first circular recess such that a thickness of the bottom surface at the center and at the circumference of the first circular recess is greater than or less than a thickness of the bottom surface between the center and the circumference of the first circular recess as taught by Kitano to yield only the expected result of a work piece formed from a first grinding step and ready for a second processing step.
The combination of Suzuki and Kitano does not disclose use of a second grinding wheel including grindstones having a particle diameter smaller than that of the first grinding wheel for the second grinding step.
However, Schneegans discloses a workpiece grinding method for a wafer similar to Suzuki and the present application and therefore constitutes analogous art. Schneegans discloses a first grinding step using a coarse grinding pad and a second grinding step using a low damage fine grinding pad (Schneegans Col 6 lines 9-51) which one of ordinary skill in the art would recognize to mean it has abrasive particle diameters smaller than that of the coarse grinding wheel.
It is obvious to combine prior art elements according to known methods to yield predictable results. See MPEP 2143(A). The MPEP states the prior art must: (1) teach each claimed element (a method or apparatus that will be modified), (2) show that one of ordinary skill in the art could have combined the elements by known methods and that the combination doesn’t change the function of the elements, and (3) show that one of ordinary skill would have recognized that applying the known technique to the base device would yield predictable results. See MPEP 2143(A).
In this case, the combination of Suzuki and Kitano teaches all elements except disclose use of a second grinding wheel including grindstones having a particle diameter smaller than that of the first grinding wheel for the second grinding step. Schneegans teaches disclose use of a second grinding wheel including grindstones having a particle diameter smaller than that of the first grinding wheel for the second grinding step, which has the function of removing any damage created during a prior grinding process and finishing the wafer to a desired thickness. When combined into Suzuki in view of Kitano by having the second grinding step use second grinding wheel having a particular diameter smaller than that of the first grinding wheel, it maintains its function of removing damage created during a prior grinding process and finishes the wafer to a desired thickness. One of ordinary skill would expect predictable results because both references pertain to grinding methods that function in the same manner in the environment of wafer manufacturing.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Suzuki in view of Kitano and in further in view of Schneegans because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
The combination of Suzuki in view of Kitano and Schneegans further renders obvious:
2. The workpiece grinding method according to claim 1, wherein, in the first grinding step, the bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a state in which a grinding surface of the first grinding wheel and the holding surface are positioned in a non-parallel state (Kitano paragraph [0072], Fig.11a shows a grinding surface of the first grinding wheel and the holding surface 112 are positioned in a non-parallel state as grinding stone 110 is inclined forward).
4. The workpiece grinding method according to claim 1, wherein, in the second grinding step, the bottom surface of the first circular recess is ground by a grinding amount that removes a grinding damage generated in the first grinding, after the bottom surface of the first circular recess is ground into the shape of being concentrical and differing in thickness in the radial direction in the first grinding step (Schneegans Col. 42-51 discloses the second grinding step removing the defects caused by the first grinding step, when implementing the teachings from Schneegans into the device of Suzuki, the modified device would similarly remove any damage caused by the first grinding step by using the finer second grinding wheel as taught by Schneegans).
5. The workpiece grinding method according to claim 4, wherein, in the first grinding step, the bottom surface of the first circular recess is formed into a shape of differing in thickness, wherein the thickness is sufficient to remove the grinding damage generated in the first grinding step is removable by grinding in the second grinding step (Schneegans Col. 42-51 discloses the second grinding step removing the defects caused by the first grinding step which implies a thickness resulting from after the first grinding step suitable for further grinding in the second grinding step, when implementing the teachings from Schneegans into the device of Suzuki, the modified device would similarly remove any damage caused by the first grinding step by using the finer second grinding wheel as taught by Schneegans).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Kitano and Schneegans as applied to claim 1 above, and further in view of Sugiya et al. (US 2014/0183163), hereinafter ‘Sugiya’.
Regarding claim 6, the combination of Suzuki, Kitano, and Schneegans renders obvious the workpiece grinding method according to claim 1, but does not disclose further comprising adjusting an inclination of the chuck table using an inclination adjustment mechanism so that a rotational axis of the first grinding wheel and a rotational axis of the chuck table form an angle a.
However, Sugiya discloses a workpiece grinding method similar to Suzuki and the present application and therefore constitutes analogous art. Sugiya discloses a adjusting an inclination of a chuck table (Sugiya 20) using an inclination adjustment mechanism (Sugiya 30) so that a rotational axis of the first grinding wheel (Sugiya, 13) and a rotational axis of the chuck table form an angle a (Sugiya Fig. 4B, see angle relative to grinding wheel axis 13a and chuck table axis 21, Fig. 6D shows the bottom surface profile of the workpiece that is similar to the Kitano Fig. 11b workpiece bottom surface profile, therefore indicating that the adjustable chuck table of Sugiya is suitable for use to obtain the workpiece as seen in Fig. 11b of Kitano).
Since reversal of parts is a supporting rationale of obviousness, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the system of Suzuki in view of Kitano and Schneegans to have used a grinding method in which the holding table is tilted with the grinding wheel axis held stationary as taught by Sugiya. A first tilting method is hold the holding table axis stationary while tilting the grinding wheel axis relative to the holding table axis. A second tilting method is to hold the grinding wheel axis stationary while tilting the holding table axis relative to the grinding wheel axis. Either technique results in tilting one structure relative to the other. Both techniques are shown to result in the same bottom water surface profile of Kitano Fig. 11b and evidenced by Sugiya Fig. 6D. Holding the grinding wheel axis stationary and tilting the holding table would only yield predictable result of grinding the workpiece as desired.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Kitano, Schneegans, as applied to claim 6 above, and further in view of Matsubara et al. (US 11524386), hereinafter ‘Matsubara’ and Sugiya.
Regarding claim 6 and 7, The combination of Suzuki, Kitano, and Schneegans renders obvious claim 1, but does not disclose
further comprising adjusting an inclination of the chuck table using an inclination adjustment mechanism so that a rotational axis of the first grinding wheel and a rotational axis of the chuck table form an angle a.;
or wherein the inclination adjustment mechanism includes two actuators and a pivot attached to the chuck table to adjust the inclination of the chuck table relative to a horizontal plane
However, Matsubara discloses a workpiece grinding method similar to Suzuki and the present application and therefore constitutes analogous art. Matsubara discloses adjusting an inclination of the chuck table using an inclination adjustment mechanism (521, 531 adjusts the inclination angle of axis 513 of chuck table CTA) so that a rotational axis of the first grinding wheel and a rotational axis of the chuck table form an angle a. (Matsubara see Fig. 2, horizontal plane defined by surface 55, see rotational axis of grinding wheel 300a at an angle with rotational axis of grinding table 513); wherein the inclination adjustment mechanism includes two actuators (Matsubara 521, 531) and a pivot (Matsubara 541) attached to the chuck table to adjust the inclination of the chuck table relative to a horizontal plane (Matsubara see Fig. 2, horizontal plane defined by surface 55, see rotational axis of grinding wheel 300a at an angle with rotational axis of grinding table 513).
Since reversal of parts is a supporting rationale of obviousness, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the system of Suzuki in view of Kitano and Schneegans to have used a grinding method in which the holding table is tilted with the grinding wheel axis held stationary, comprising adjusting an inclination of the chuck table using an inclination adjustment mechanism so that a rotational axis of the first grinding wheel and a rotational axis of the chuck table form an angle a; wherein the inclination adjustment mechanism includes two actuators and a pivot attached to the chuck table to adjust the inclination of the chuck table relative to a horizontal plane as taught by Matsubara. A first tilting method is hold the holding table axis stationary while tilting the grinding wheel axis relative to the holding table axis. A second tilting method is to hold the grinding wheel axis stationary while tilting the holding table axis relative to the grinding wheel axis. Either technique results in tilting one structure relative to the other. Both techniques are shown to result in the same bottom water surface profile of Kitano Fig. 11b and evidenced by Sugiya Fig. 6D. Holding the grinding wheel axis stationary and tilting the holding table would only yield predictable result of grinding the workpiece as desired.
Allowable Subject Matter
Claim 3 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose nor render obvious a workpiece grinding method including wherein the first grinding step includes a wall surface forming step of bringing the grinding surface of the first grinding wheel and the holding surface closer to each other in a state in which the grinding surface of the first grinding wheel and the holding surface are positioned in a parallel state, to form a wall surface of the annular projecting part, and a bottom surface forming step of bringing the grinding surface of the first grinding wheel and the holding surface closer to each other and bringing a rotational axis of the first grinding wheel and a rotational axis of the chuck table closer to each other, to grind the bottom surface of the first circular recess into a shape of being concentrical and differing in thickness in the radial direction, after the wall surface forming step as claimed in claim 3 in combination with its base claim limitations.
While the prior art discloses using a single grinding wheel to form the wall and the bottom surface, there does not appear to be sufficient rationale to combine the prior art elements to achieve the differing thickness aspect of the bottom surface of the circular recess in combination with the parallel state of the wall forming surface. The closes prior art Suzuki (US 2021/0291316) does not disclose the parallel state for the wall forming step prior to the bottom surface forming step as it has forms its wall with an angled orientation during its oblique grinding step.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wen et al. (US 11837632) Fig. 2 shows a first grinding step resulting in wherein, in the first grinding step, the bottom surface of the first circular recess is ground into a shape of being concentrical and differing in thickness in a radial direction from a center to a circumference of the first circular recess such that a thickness of the bottom surface at the center and at the circumference of the first circular recess is greater than or less than a thickness of the bottom surface between the center and the circumference of the first circular recess, etc.
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 Dustin T Nguyen whose telephone number is (571)270-0163. The examiner can normally be reached M - F: 8:00am - 4:30pm.
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, Nathaniel E. Wiehe can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DUSTIN T NGUYEN/Primary Examiner, Art Unit 3745 July 10, 2026
Prosecution Insights