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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-16 in the reply filed on 7/28/2026 is acknowledged.
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 1-16 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.
Claims 1 and 16 recite “an inside block placed inside the openings” and then recites “the inside blocks are plural.” This unclear as Applicant defines a singular inside block, then refers back to it in the plural and states the plural not previously referred to is plural. Further, “planar view” is odd terminology and Examiner assumes “plan view” is intended, which is a 2D bird’s eye view. The same edit should be made in claims 6 and 9.
Examiner recommends re-writing such as: “an outside block having a first-direction length longer than a second-direction length in a plan view and having a plurality of openings; and an inside block placed inside each of the plurality of openings, [[and]] wherein each of the inside blocks are
Claim 12 recite “lower the inside block in the order of from both outside to a center. This does not make sense. Examiner assumed inside blocks toward outer edges of the block unit are lowered before inside blocks closer to a center of the block unit.
Claim 14 recites “the control unit lifts all the inside block by the dome.” This appears to suggest the dome causes raising of the block, but the instantly described dome [132] is merely a stationary exterior portion. Examiner assumes “by the dome” means “relative to the dome” but requests clarification.
The remaining claims are rejected as being dependent on an indefinite claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 and 3 do not further limit Claim 1, which requires the block have a plurality of openings in the block unit, each housing an inside block. Claims 2 and 3 attempt to retract this limitation and reorient it into an alternate and distinct species where in Claim 2, there is only one opening holding inside blocks instead of a plurality, and in Claim 3, there are multiple outside blocks with one opening instead of a plurality of openings in one block. Claims 2 and 3 cannot coherently depend from Claim 1. A dependent claim must incorporate ALL element of the claim from which it depends. Claims 2 and 3 are improper and are generally ignored as contradictory to the claim from which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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.
Claim(s) 1-5, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Acello et al. (US 6,283,693).
Regarding Claims 1, 4 and 16, Acello et al. teaches a semiconductor manufacturing device (See col. 1, lines 5-9), comprising:
a wafer holder [30] for holding a dicing tape [28] to which a die [26] is attached (See Fig. 1 and col. 5, lines 23-34); and
a push-up unit [10] having a block unit [18] for pushing up the dicing tape [28] (See Fig. 6), wherein the block unit [18] comprises:
an outside block [18a] having a first-direction length longer than a second-direction length (See Fig. 4, showing a much longer length) in a plan view and having a plurality of openings [18b]; and an inside block [16] placed inside each of the openings [18b], and the inside blocks are placed side by side along the first direction (See col. 6, lines 15-33, and note the pins are circular inside blocks as claimed, see Fig. 5). Claims 2-3 do not have a coherent claim scope and cannot be addressed since they are alternate species dependent on a mutually exclusive embodiment since a block cannot both have a plurality and only a single opening simultaneously. The embodiment in Claim 1 is constructively elected as being in the independent claim.
Regarding Claim 5, Acello et al. the pins have a 10-20 mil diameter, i.e. are 0.254-0.508 mm in second direction (See col. 4, lines 48-51).
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) 1-4, 8-11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2006/0003491).
Regarding Claims 1-4 and 16, Kim et al. teaches a semiconductor manufacturing device (See page 1, paragraph [0003], wherein the device process semiconductor, thus making it a semiconductor manufacturing device), comprising:
a wafer holder [51] for holding a dicing tape [23] to which a die [20] is attached (See Fig. 6 and page 2, paragraph [0028], wherein a vacuum holder is a wafer holder as claimed; note there is also implicitly some further wafer holding to hold the tape extended as shown in Fig. 6 and such a wafer holder is at least obvious); and
a push-up unit [50] having a block unit [57],[53] for pushing up the dicing tape [28] (See Fig. 6), wherein the block unit [18] comprises:
an outside block [57] having a first-direction length longer than a second-direction length (See Fig. 2, showing a different length and width, and at least rendering this obvious to match the desired shape of chips, which are often rectangular, see In re Dailey, 357 F.2d 669 (CCPA 1966), indicating shape is a matter of choice absent evidence of significance) in a plan view and having a plurality of openings [59]; and an inside block [53a] placed inside each of the openings [59], and the inside blocks are placed side by side along the first direction (See Figs. 2-4, 7 and 8, and note the unit pushes up tape and the blocks [53a] are circular). Claims 2-3 do not have a coherent claim scope and cannot be addressed since they are alternate species dependent on a mutually exclusive embodiment since a block cannot both have a plurality and only a single opening simultaneously. The embodiment in Claim 1 is constructively elected as being in the independent claim.
Regarding Claims 8-9, Kim et al. teaches the inside blocks have a plurality of members [53a],[53] placed concentrically (See Fig. 4). Examiner notes since both the pin holder [53a] and pinhead [53c] are distinct objects, i.e. blocks, inside the openings, they are each different sized inside blocks that are side by side in the openings.
Regarding Claim 10, Kim et al. illustrates the holes [59] in holding pins holder [53a] narrow to hold the pin holder [53a] at a raised location and allow the lifting rod to pass through the ejecting block [57] (See Figs. 3-4). The holes result in a narrowing of the peripheral wall of the block [57] in the area of the holes and thus when the hole narrows, the wall of block [57] on the peripheral side effectively becomes wider. Although the bottom floor of housing pin holder [53a] widens the block in this area at a right angle, a conical nest to support a conical bottom would achieve an equivalent function and create a width gradient in the area of the conical taper with respect to the center axis. As such, Claim 10 is nothing more than a vague shape limitation that does not even specify a shape, but only an angle of the shape changing a width. Examiner submits such broad changes in shape are a matter of choice and are considered obvious to a person having ordinary skill in the art absent persuasive evidence that the shape is significant. In re Dailey, 357 F.2d 669 (CCPA 1966).
Regarding Claim 11, 14 and 15, Kim et al. teaches independent movement of each of the pins [53] and ejecting blocks, presumably, or at least obviously, by some control unit of the system (See page 3, paragraphs [0038]-[0039] and Figs. 7-8). Kim et al. teaches the inside [53] and outside [57] blocks can be raised together and the inside blocks [53] can be raised on their own. There would be no reason to constrain the movement order and implementing independent control of the inside [53] and outside [57] blocks would have been desirable to enable process variability in the device. Any such independently control movement may carry out the claimed ordering. It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,228-29 (CCPA 1971 ); In re Danly, 263 F.2d 844,847, 120 USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Further, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Note vacuum holder [51] is a dome surrounds the block unit [57]/[53] and absorbs the tape. Central control, i.e. via a control unit, of movement and vacuum operation is surely obvious to automate the system from a single control location and this is standard in high tech industrial devices.
Claim(s) 6-7, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. as applied to Claims 1 and 11, and further in view of Maki et al. (US 2005/0059205) and optionally Acello et al.
Regarding Claim 6-7 Kim et al. teaches the method of Claim 1 as described above. Kim et al. teaches circular block, not polygonal blocks. However, polygonal square blocks are well-known in similar device for ejecting a chip for tape (See, for example, Maki et al., Abstract and Figs. 37-38, showing a polygonal peeling device for semiconductor tape). Examiner submits, circular, square, or other shapes such as rounded edge blocks, i.e. arc shaped corners, would have predictably been suitable as block shapes as long as they could press the tape as required. Note changes in shape are a matter of choice and are considered obvious to a person having ordinary skill in the art absent persuasive evidence that the shape is significant. In re Dailey, 357 F.2d 669 (CCPA 1966).
Regarding Claims 12 and 13, Kim et al. teaches the method of Claim 1 as described above. Kim et al. teaches the outside block [57] and inside blocks [53] independently move relative to each other as described above. However, in the system of Kim et al. the inside blocks [53] reside on the same support and are constrained from moving relative to each as required in Claims 12 and 13 to remove the tape. However, in similar devices for ejecting semiconductor parts from tape wherein the outside block and inside block move independently, it is known to also allow independent movement of the inside blocks in order to progressively remove the tape by sequentially retracting the blocks inside to outside (See, for example, Maki et al., Abstract, page 8, paragraphs [0126]-[0127], teaching individually movable inside blocks [410b],[410c] within a movable outside block [410a] so the pushes fall away from the tape from inside to outside). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to implement individual movement of the internal blocks. Doing so would have predictably facilitated more nuanced part by part peel of the tape from the semiconductor, such as is known in similar devices.
Although Maki et al. teaches lowering outside to center, it does not specifically teach side to side lowering. However, individual control of pins using solenoids is well-known in the prior art to selectively raise and lower ejecting pins as desired (See, for example, Acello et al., col. 4, lines 39-47 and col. 7, lines 28-43). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to implement individual control of each pin in Kim et al., such as using well-known pin control methods such as solenoids. Doing so would have predictably implemented improved tape peel while allowing maximum operational control over the device for process variations.
It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,228-29 (CCPA 1971 ); In re Danly, 263 F.2d 844,847, 120 USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Further, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The independent control of the pins ensures the device is capable of carrying out the intended process ordering since any pins may be actuated in any order as desired, such as side to side lowering.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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