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 .
Information Disclosure Statement
The information disclosure statements filed on 02/27/2024 and 06/02/2026 fail to comply with 37 C.F.R. § 1.98(a)(3)(i) because they do not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 C.F.R. § 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Specifically, the English-language publications indicated for the submitted foreign patent documents do not fulfill the concise-explanation requirement. MPEP § 609.04(a)(III) states, “An English-language equivalent application may be submitted to fulfill this requirement if it is, in fact, a translation of a foreign language application being listed” (emphasis added). Applicant makes no statement that the English-language publications are actually translations of the listed foreign patent references. Patent application publications may differ from their so-called foreign counterpart applications because subject matter is commonly added, modified, or deleted, including entirely different abstracts and claims, and therefore, are not necessarily translations of the foreign counterpart applications. Further, if the submitted English-language publications are actually translations of the listed foreign patent references, then there should not be any need to submit the foreign patent references. 37 C.F.R. § 1.56(b) (“Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application”). They have been placed in the application file, but the information referred to therein has not been considered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Specification
As an initial matter, all objections and references herein pertain to the marked-up, amended specification filed on 02/27/2024, which appears to have been filed as an appendix to the 02/27/2024 Preliminary Amendment.
The disclosure is objected to because of the following informalities:
¶ 0023, “A first region (22), which lies in the lower right quadrant” should be corrected to refer to the lower left quadrant (see Fig. 2 and priority document EP 21194262.8);
¶ 0023, “a second region (21), which lies in the lower left quadrant” should be corrected to refer to the lower right quadrant (see Fig. 2 and priority document EP 21194262.8).
Appropriate correction is required.
The amendment filed 02/27/2024 is objected to under 35 U.S.C. § 132(a) because it introduces new matter into the disclosure. 35 U.S.C. § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
¶ 0017, “All features described and/or illustrated herein can be used alone or combined in different combinations.”;
¶ 0022, “One or more aspects of the present disclosure are based on the optimum distribution of a fluid in the surroundings of the grinding tool in order to treat a semiconductor wafer so as to remove material from both sides at the same time.”;
¶ 0058 - the entire paragraph;
¶ 0059 - the entire paragraph.
Applicant is required to cancel the new matter in the reply to this Office action.
Claim Objections
Claims 1 and 3-6 are objected to because of the following informalities:
“a lower left quadrant” (claim 1, line 13) should be changed to --a lower left quadrant of the semiconductor wafer--;
“a ratio of the first coolant flow rate and a sum” (claim 1, line 14) should be changed to --a ratio of the first coolant flow rate to a sum--;
“the semiconductor” (claim 3, line 2) should be changed to --the semiconductor wafer--;
“comprises” (claim 3, line 2) should be changed to --further comprises--;
“the rotation” (claim 4, line 3) should be changed to --a rotation--;
“the clockwise sense” (claim 4, line 3) should be changed to --a clockwise sense--;
“with a decreasing height h” (claim 5, line 4) should be changed to --with a decrease in the height h--;
“which is inclined by” (claim 6, lines 3-4) should be changed to --wherein the first straight line is inclined by--;
“which is inclined by” (claim 6, line 6) should be changed to --wherein the second straight line is inclined by--;
“the midpoint of the semiconductor wafer” (claim 6, line 11) should be changed to --a midpoint of the semiconductor wafer--.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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 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.
Claim 1 recites the limitation “the rotating semiconductor wafer” (lines 5-6). There is insufficient antecedent basis for this limitation in the claim, which renders the claim unclear and ambiguous. Although there is antecedent basis for the “semiconductor wafer” itself, the “rotating” aspect is not previously recited, and it is unclear whether this limitation refers to the same, previously recited semiconductor wafer or to a different one that is rotating. For examination purposes, this limitation is interpreted as best understood. Examiner suggests removing the word “rotating” from this limitation and amending the claim to recite a separate step for rotating the semiconductor wafer during the processing step (see claim 4). Claims 2-6 are rejected on the basis they incorporate this limitation of claim 1.
Claim 1 recites the limitation “by one or more nozzles” (lines 10-11). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, does this limitation refer to the same “one or more nozzles (line 8) previously recited, or does this refer to a different “one or more nozzles”, or is there an overlap in nozzles between the two recited “one or more nozzles” of claim 1? For examination purposes, this limitation is interpreted as best understood. Claims 2-6 are rejected on the basis they incorporate this limitation of claim 1.
Claim 4 recites the limitation “the semiconductor wafer is rotated, and [a] rotation takes place in [a] clockwise sense, the contact region being observed.” (lines 3-4). Specifically, it is unclear what “the contact region being observed” means in this context. Does this phrase refer to the perspective when determining the “clockwise sense” (Spec. ¶ 0048), or does this mean that an observation process is occurring? Examiner notes that the latter does not appear to have sufficient support in the specification and may be subject to a § 112(a) rejection. For examination purposes, this limitation is interpreted as best understood.
Allowable Subject Matter
Claim 1 would be allowable if rewritten to overcome the rejections under 35 U.S.C. § 112(b) as set forth in this Office action.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
The following is Examiner’s statement of reasons for allowance:
Regarding claim 1, the prior art of record does not anticipate or render obvious the limitations of claim 1 in the recited combination as claimed, in particular the limitations:
processing the semiconductor wafer so as to remove material by grinding with a grinding tool...while delivering a coolant into a contact region between the rotating semiconductor wafer and the grinding tool;
at each instant of the grinding, a first coolant flow rate is applied onto a first region on one side of the semiconductor wafer by one or more nozzles;
and at each instant of the grinding, a second coolant flow rate is applied onto a second region on the one side of the semiconductor wafer by one or more nozzles,
wherein the first region is bounded by a lower right quadrant of the semiconductor wafer and the second region is bounded by a lower left quadrant [of the semiconductor wafer] (Examiner interprets the “lower right quadrant” and “lower left quadrant” as the quadrants of the semiconductor wafer as viewed from the “one side” (e.g., the top side) where coolant is being applied),
and wherein a ratio of the first coolant flow rate [to] a sum of the first coolant flow rate and the second coolant flow rate is no more than 35% and no less than 25%.
The prior art of record does not disclose or render obvious all of the limitations of claim 1 in combination as claimed. For example, while the use of one or multiple nozzles to apply different amounts of coolant during a semiconductor wafer grinding process is known, the prior art of record generally discloses fluid and/or coolant being directly applied to the grinding tool or polishing pad and not onto the wafer itself (see, e.g., US 20190054590 A1 (“Huang”) Figs. 1A-B; US 20210402553A1 (“Wu”) Figs. 1A-B). Where the prior art of record discloses fluid and/or coolant being applied (whether directly or indirectly) onto the wafer itself (see, e.g., US 6095899 A (“Elmar”) Figs. 6-7; US 20140352608 A1 (“Ishibashi”) Figs. 4-6; JP 6316652 B2 (“Gadd”) Figs. 2-7); JP 2015030055 A (“Tsuno”) Figs. 2-3), the prior art does not disclose the fluid and/or coolant being applied, at each instant of the grinding, onto the first and second regions (as defined by quadrants) of the wafer with separate flowrates in the ratio as recited.
Claims 2-6 are allowable for depending from claim 1 (subject to addressing the claim objections and § 112(b) rejections where appropriate).
Status of Claims
Claims 1-6 are pending. Claims 1-6 are rejected.
Conclusion
The prior art made of record on Form PTO-892 and not relied upon is considered pertinent to Applicant’s disclosure because the references pertain to similar grinding tools and methods, including grinding tools where fluid and/or coolant is applied to the grinding tool and/or workpiece in multiple areas.
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/KENT N SHUM/ Date: July 25, 2026Examiner, Art Unit 3723
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