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 .
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.
Election/Restrictions
Applicant’s election without traverse of claims 1-6 and 8 in the reply filed on 11/18/2025 is acknowledged.
Claim 7 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/18/2025.
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 1-6 and 8 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 reference to claims 1-6 and 8:
Claim 1 recites the limitation “a semiconductor wafer including an orientation flat and a jig having a shape corresponding to the orientation flat to be used for cutting the orientation flat by a dicing blade are fixed to each other by a dicing tape; and a transport machine transporting the jig so that the jig faces the orientation flat on the stage”. However, it is unclear how the wafer can include “an orientation flat” and the jig has a shape corresponding to the flat “to be used for cutting the orientation flat” and “the jig faces the orientation flat”, indicating the orientation flat has been cut, and the jig shape is “to be used for cutting the orientation flat”, indicating the flat has not been cut. For the purposes of examination, the claim is interpreted as the wafer having an orientation flat and the jig has a shape used for cutting along the orientation flat (See Applicant’s Fig. 3 as supporting this interpretation).
Claims 2-6 and 8 are rejected as depending from an indefinite claim and failing to provide sufficient limitations to overcome the indefiniteness.
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.
Claim(s) 1-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamura (US20110294279A1) in view of Park (US20060169680A1).
In reference to claim 1:
Okamura discloses a semiconductor manufacturing device (para 0002, Fig. 3), comprising: a stage (Fig. 3). Okamura further discloses that the substrate is placed on the dicing tape (para 0027, Figs. 2A-3) but does not explicitly disclose a transport machine. However, this would have been obvious in view of Park. Park teaches a device for dicing a wafer (abstract). Park further teaches a transport machine to automatically transport objects to the stage (para 0030-0033, Fig. 2). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Okamura with the transport machine of Park in order to obtain a device which automatically places the object on the stage.
Modified Okamura does not explicitly teach the stage on which a semiconductor wafer including an orientation flat and a jig having a shape corresponding to the orientation flat to be used for cutting the orientation flat by a dicing blade are fixed to each other by a dicing tape and transporting the jig so that the jig faces the orientation flat on the stage. However, “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In reference to claim 2:
Okamura teaches wafer mounting device (para 0027, Fig. 3), comprising:
the semiconductor manufacturing device according to claim 1 (see claim 1, above); and
a tape sticking part sticking the semiconductor wafer (para 0027); and
a wafer ring surrounding the object (para 0027, Fig. 2A-2B numeral 3).
Modified Okamura does not explicitly teach the jig facing the orientation flat, and a wafer ring surrounding the semiconductor wafer and the jig which are mounted on the stage to the dicing tape. However, “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In reference to claim 3:
Modified Okamura teaches a dicing device (Okamura para 0009, Fig. 3), comprising:
the semiconductor manufacturing device according to claim 1 (see claim 1, above); and
the dicing blade (Okamura para 0029-0030, Fig. 3 numeral 523), wherein
the transport machine transports and sticks the object (as referenced above, Park para 0030-0033, Fig. 2, as modified in claim 1 the device would be capable of performing the intended use and inclusion of the material or article worked upon does not impart patentability. see MPEP § 2115).
Modified Okamura does not explicitly teach the transport machine transports and sticks the jig to the dicing tape to which the semiconductor wafer and a wafer ring surrounding the semiconductor wafer are stuck and which is mounted on the stage or the dicing blade cuts the orientation flat along the orientation flat while having contact with the jig. However, “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In reference to claim 4:
In addition to the discussion of claim 1, above, Modified Okamura does not explicitly teach wherein a material of the jig and a material of the semiconductor wafer are a same as each other. However, “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In reference to claim 5:
In addition to the discussion of claim 1, above, Modified Okamura does not explicitly teach wherein a thickness of the jig and a thickness of the semiconductor wafer are a same as each other. However, “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In reference to claim 6:
In addition to the discussion of claim 1, above, Modified Okamura does not explicitly teach wherein the transport machine transports the jig so that a gap is located between the jig and the orientation flat. However, the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
In reference to claim 8:
In addition to the discussion of claim 4, above, Modified Okamura does not explicitly teach wherein a thickness of the jig and a thickness of the semiconductor wafer are a same as each other. However, “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW L SWANSON whose telephone number is (571)272-1724. The examiner can normally be reached M-Th 0800-1900 and every other Friday 0800-1600.
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/ANDREW L SWANSON/Examiner, Art Unit 1745