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 .
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) 1 - 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (US 2015/0001681) in view of Kannaka et al (US 2013/0139950) and Watanabe et al (US 2015/0059644).
With regards to claim 1, Lu teaches a substrate processing method of applying a filler to a laminated substrate having a first substrate and a second substrate bonded to each other (Abstract) comprising applying the filler to a gap between the edge portion of the first substrate and the edge portion of the second substrate of the laminated substrate under determined applying condition (as seen in Figure 1 items 104, 106, 107 and 108).
Lu fails to explicitly disclose that the method comprises measuring surface shapes of an edge portion and determining an applying condition for the filler to be applied.
Kannaka discloses a method for bonding wafers (Abstract), in the same field of endeavor as Lu, where Kim discloses measuring the surface shapes of an edge portion of the first substrate and an edge portion of the second substrate, the surface shapes specifying a dimension gap formed by the edge portion of the first substrate and the edge portion of the second substrate (Figure 4, Figures 7A – 7F).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have used Kannaka’s sensor in Lu’s method. The rationale being that, as stated by Kannaka, it allows for the apparatus to accurately measure and position the wafers (paragraph 4).
Lu and Kannaka fail to explicitly states that the measurement determines the applying condition for a filler.
Watanabe discloses an apparatus for applying a coating (Abstract), in the same field of endeavor as Lu and Kim, where Watanabe teaches determining an applying condition for a coating based on results of measuring a surface (paragraphs 47, 49, 51 and 53). It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have determined the applying conditions for the filler to be applied to the laminated substrate based on results of measuring of the surface shapes, as suggested by Watanabe, in Lu’s method as modified by Kannaka. The rationale being that, as stated by Watanabe, it allows for a uniform coating in view of changing surfaces (paragraphs 10 and 11).
With regards to claims 2 and 3, the teachings of Lu, Kannaka and Watanabe are presented above. Additionally, Kannaka teaches that the shapes of the edge portion of the first and second substrates are measured before and after the substrates have bonded (as seen in Figures 4 and 5).
With regards to claim 4, the teachings of Lu, Kannaka and Watanabe are presented above. Additionally, Kannaka teaches that the surface shapes of the edge portion of the first substrate and the second substrate to be measured are specified by at least one of a dimension of the edge portion of the first substrate in a radial direction of the first substrate and a dimension of the edge portion of the second substrate in a radial direction of the second substrate (paragraphs 47, 48 and 52).
With regards to claim 5, the teachings of Lu, Kannaka and Watanabe are presented above. Additionally, Watanabe teaches that the applying condition includes a distances between the laminated substrate and the emitting port (paragraph 47).
With regards to claim 6, the teachings of Lu, Kannaka and Watanabe are presented above. Additionally, Lu teaches that the method further comprises curing the filler after applying the filler to the laminated substrate (paragraph 27). While Lu states that thermal process is performed for post curing (paragraph 27), Lu, Kannaka and Watanabe fail to explicitly disclose that hot air is performed to cure the filler which would require applying wind pressure and temperature of the hot air as applying conditions. Yet one of ordinary skills in the art would appreciate that application of hot air is well known in the art and would require adjusting the air pressure and the temperature of the hot air in order to control the curing the process.
With regards to claim 7, the teachings of Lu, Kannaka and Watanabe are presented above. Additionally, Lu teaches that the application of the filler is performed while rotating the laminated substrate through a stepper motor (paragraph 13), which would require adjusting the rotation speed of the substrate.
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior arts does not teach or suggest determining an applying condition for a filler to be applied to a gap of a laminated substrate based on a dimension of the gap formed between the edge portion of the first substrate and the edge portion of the second substrate. Applicant further argues that the art of Watanabe does not provide any teachings, suggestion or motivation for combining the arts of Kannaka and the art of Lu. The Examiner respectfully disagrees.
Regarding Applicant’s argument that the prior arts do not teach the limitation of determining an applying condition for a filler to be applied to a gap of a laminated substrate based on a dimension of the gap formed between the edge portion of the first substrate and the edge portion of the second substrate, the Examiner acknowledges that the art of Watanabe does not teach specifically applying a filler in a gap as disclosed by Lu and the claimed invention, but it teaches to adjust the coating based on application conditions such as the position of the nozzle with respect to the wafer where the coating is to be applied. One of ordinary skills in the art would be able to extrapolate the teachings of Watanabe of determining the distance between the nozzle and the wafer into the art of Lu in order to adjust the distance between the gap and the filler nozzle. This distance can be determined by using the monitoring system taught by Kannaka.
Secondly, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the fact that Watanabe teaches calculating a coating discharge width based on the measured planar shape of a substrate to achieve uniform coating would allow one of ordinary skills in the art to appreciate the necessity to consider the shape of the target to where the coating is being applied which can be extrapolated to determining the dimension of a gap where a filler is to be applied.
Finally, the claim language does not mention what are the applying conditions that needs to be determined, only that is based on results of measuring the surface shapes. If the conditions are just the dimension of a gap, this can be learned from Watanabe since Watanabe takes into consideration the distance between the nozzle and the wafer and the shape of the substrate.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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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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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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