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 .
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 1-12 and 14 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 outer circumferential end" in line 7. There is insufficient antecedent basis for this limitation in the claim. This will be read as the outer circumferential edge.
Claim 14 recites the limitation "the outer peripheral edge part" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “measuring part” in claim 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The limitation “measuring part” recites the generic placeholder “part” coupled with the functional modifier “measuring” without reciting sufficient structure to perform the function claimed. This will be interpreted as: an edge sensor or surface potential measurement sensor, disclosed in applicant’s specification, and equivalents thereof.
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)1-6, 9, and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over TSAO et al. (US 2018/0147825) in view of LANDRU (US 2015/0231790).
Regarding claims 1-4 and 11-13, TSAO teaches a method of separating semiconductor chip wafer chamfered outer edge from a semiconductor substrate by inserting a blade along the main surface into the edge, applying a force to the wafer away from the substrate to peel, and sensing the force required to overcome the bonding forces (para. 18). TSAO does not teach that the wafer has a chamfered edge and the blade comprises first and second tool parts, where the second tool part contacts the peripheral edge of the wafer. LANDRU teaches another method for separating a laminate via blade insertion at a chamfered edge, wherein the blade comprises a first tool part 32 and a second tool part 33, where separation occurs with contact of the second tool part against the periphery, and that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilized such a common chamfered edge to facilitate separation and a blade as the blade of TSAO because a blade with a first part having a small acute angle allows easy separation by imparting forces approximately perpendicular to the laminate and a second part having a larger acute angle in order to propagate the separation wave, reinforce the corner effect during separation, and limit the risk of scratching the faces of the substrates during separation (LANDRU; paras. 129 and 132-133; fig. 2).
Regarding claim 5, the references do not explicitly state the angle of the first tool part is smaller than the chamfer angle, but LANDRU shows an example of the angle of the first part as smaller than the chamfer angle of the wafer (fig. 2), and it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a tip angle that is less than the chamfer angle so that the blade edge may be inserted into the chamfered region.
Regarding claim 6, LANDRU teaches inserting the front tool part before the second tool contacts the edge (paras. 132-133).
Regarding claim 9, LANDRU teaches inserting the blade, where the first and second blade parts are fixed relative to each other (fig. 3; para. 129).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as combined, as applied to claim 1 above, and further in view of HONDA et al. (US 2015/0343755).
Regarding claim 12, the references as combined do not teach peeling the chip by electrostatic force. HONDA teaches another method of delaminating via blade insertion, wherein the wafer is peeled by electrostatic force (para. 120), where it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize electrostatic chucks in place of the chucks as the references as combined because electrostatic chucks were well-known chucking mechanisms commonly used as functional equivalent alternate expedients at the time of the invention.
Allowable Subject Matter
Claims 7, 8, and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 of record does not teach or fairly suggest a method as claimed wherein inserting the first tool part along the main surface comprises bringing the second tool part into contact with the outer peripheral edge part before the first tool part; wherein inserting the first tool part comprises moving the first tool part relative to the second tool part; or wherein a widthwise length of each of the first tool part and the second tool part is longer than a widthwise length of the chamfered peripheral edge part of the semiconductor chip.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: KUMAKURA et al. (US 2015/0059987) and YANAGITA et al. (US 2001/0003668).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745