DETAILED ACTION
Claims 1-10 are pending as submitted on 06/25/24,
claims 6 & 10 being withdrawn.
Election/Restrictions
Applicant’s election without traverse of Group I, Species A in the reply filed on February 3, 2026 is acknowledged. Claim 6, drawn to Species B, and claim 10, drawn to Group II, are hereby withdrawn.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-4 & 7-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Priewasser et al., US 2019/0252254.
With regard to claims 1 & 3, the prior art teaches a known method for pressing a peripherally protruding protective film (4) to a wafer (W) containing bumps on its main surface & a peripheral edge without bumps, wherein a pressing member (22) compresses the film in a thickness direction against the wafer/bumps & a peripheral support member (21) to protect the bumps (throughout, e.g. abstract, [0045 & FIGS. 1-12]).
With regard to claim 4, the support member is also shown to be parallel to the wafer surface [FIGS. 5-7 & 11-12].
With regard to claims 7-8, the protective film can be heated into a plastic state [0036, 0045].
Claims 1-4 & 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashishita et al., WO 2013/021644.
With regard to claims 1-3, the prior art teaches a known method for pressing a peripherally protruding protective film (10) to a wafer (20) containing bumps on its main surface & a peripheral edge without bumps, wherein two flat-faced pressing members (22) compress the film in a thickness direction against the wafer/bumps & a peripheral support member (30) to protect the bumps (throughout, e.g. abstract, [0073 & FIGS. 2C-2E, 6-7]).
With regard to claim 4, the support member is also shown to be parallel to the wafer surface [FIG. 2C].
With regard to claims 7-8, the protective film can be heated into a plastic state [0073].
Claims 1, 3-4 & 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu et al., JP 2008-166459.
With regard to claims 1 & 3, Shimizu teaches a known method for pressing a peripherally protruding protective film (14) to a wafer (12) which comprises bumps (12a) on its main surface & a peripheral edge without bumps, wherein a pressing member (26) compresses the film in a thickness direction against the wafer/bumps & also against a peripheral support member (22) in order to protect the bumps, wherein the top of the peripheral support member is parallel to the wafer main surface, and the clearance between the pressing member and the peripheral support member is less than the clearance between the pressing member and the wafer main surface (throughout, e.g. abstract, [FIGS. 1-4]).
With regard to claim 4, the support member is also shown to be parallel to the wafer surface [FIG. 2].
With regard to claims 7-8, the protective films of Shimizu [0027] can be heated into a plastic state in the usual manner.
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.
Claims 5 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Priewasser et al., US 2019/0252254.
With regard to claim 5, Figures 7 & 12 appear to show that the exemplary vertical distance between the main surface of the wafer & the pressing member is larger than the vertical distance between the peripheral support member & the pressing member, wherein the pressing member is also said to protrude downward & cooperate with compression at the peripheral support member [0215] and thus if not already understood, making the distance in question smaller would at least have been obvious to one of ordinary skill in the art, in order to provide enhanced compression of the film at an edge.
With regard to claim 9, Figures 5-9 & 11-12 appear to show that the exemplary protective film thickness is no less than half the bump height as claimed (and indeed appears to be greater than the bump height, encapsulating said bumps), wherein the film is also said to be preferably 80 – 150 microns in thickness and thick enough to protect the wafer and conform well to the bumps [0133-0134], and the bumps are said to be preferably 70 – 150 microns in thickness [0141], wherein meeting the claimed thickness ratio if not already understood would at least have been obvious to one of ordinary skill in the art, in order to provide enhanced conformation/encapsulation.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashishita et al., WO 2013/021644.
With regard to claim 9, the protective film thickness is also shown to be greater than the bump height [FIGS. 2-5 & 6-7], wherein the bumps may be 15-100% of the thickness of the softening layer of the protective film [0013], wherein meeting the claimed thickness ratio if not already understood would at least have been obvious to one of ordinary skill in the art, in order to provide enhanced conformation/encapsulation.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al., JP 2008-166459 in view of Seykia et al., US 2018/0315610.
While Shimizu does not expressly disclose that the entire lower pressing surface is a flat surface, the bottom pressing portion of the exemplary roller is believed to be flat/a straight line along its width, which may be considered to satisfy such a limitation. In any event, rollers and plate pressers were known variants for wafer tape laminating systems, as shown for example by Sekiya, which uses rollers (86) and flat platens (72/74) to laminate such layers (throughout, e.g. abstract, [FIGS. 6-7]). It would have been obvious for one of ordinary skill in the art to substitute a flat press plate for a press roller to perform substantially the same lamination process with predictable success.
Claims 5 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al., JP 2008-166459.
With regard to claim 5, Figures 1-2 appear to show that the exemplary vertical distance between the main surface of the wafer & the pressing member/tape top is larger than the vertical distance between the peripheral support member & the pressing member/tape top, and thus if not already understood, making the distance in question smaller would at least have been obvious to one of ordinary skill in the art, in order to provide enhanced compression of the film at an edge.
With regard to claim 9, Figure 2 appears to show that the exemplary protective film thickness is no less than half the bump height as claimed (and indeed appears to be greater than the bump height, encapsulating said bumps), wherein meeting the claimed thickness ratio if not already understood would at least have been obvious to one of ordinary skill in the art, in order to provide enhanced conformation/encapsulation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 & 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,064,946. Although the claims at issue are not identical, they are not patentably distinct from each other because the earlier issued claims comprise essentially the same limitations (claim 1 being narrower than the pending claim 1 and incorporating the subject matter of several additional dependent claims).
Conclusion
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/JOHN BLADES/
Examiner
Art Unit 1746
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745