Prosecution Insights
Last updated: October 02, 2026
Application No. 18/784,200

PROCESSING METHOD FOR WORKPIECE

Non-Final OA §103§112
Filed
Jul 25, 2024
Priority
Aug 10, 2023 — JP 2023-131475
Examiner
FULL, SIDNEY DANIELLE
Art Unit
Tech Center
Assignee
DISCO Corporation
OA Round
1 (Non-Final)
70%
Grant Probability
Favorable
1-2
OA Rounds
8m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 70% — above average
70%
Career Allowance Rate
107 granted / 153 resolved
+9.9% vs TC avg
Strong +68% interview lift
Without
With
+67.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
35 currently pending
Career history
202
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
50.0%
+10.0% vs TC avg
§102
23.3%
-16.7% vs TC avg
§112
22.4%
-17.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 153 resolved cases

Office Action

§103 §112
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 5-8 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. Claims 5-8 recites the limitation "an outer peripheral portion" in ll. 5 of each claim. There is insufficient antecedent basis for this limitation in the claim. Claim 1, which claims 5-8 all depend on, recites “an outer peripheral portion” of the workpiece. Is unclear to the Examiner whether these outer peripheral portions are the same or different portions. For examination purposes and as best understood from instant disclosure, “an outer peripheral portion” in claims 5-8 refers to an upper outer portion peripheral (on the first wafer), which is a portion of the outer peripheral portion of the entire bonded workpiece. Claims 5, 6, 7, and 8 ll. 5, --[[an]]a first wafer outer peripheral portion thereof, and— 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Okamura (US 2022/0184768) in view of Wiand (US Patent No. 4,131,436). Regarding claim 1, Okamura (US 2022/0184768) discloses a processing method (pp. [0001]) for a disk-shaped workpiece (item 11; figs. 1-4) having a first circular side (item 11a; figs. 1 and 4A) and a second circular side (item 11b; figs. 1 and 4A), the processing method being applied when processing an outer peripheral portion of the workpiece (item 11c; pp. [0033]; fig. 3A) and comprising: a holding step (pp. [0031]; fig. 1, defined as step S10) of holding the workpiece at the second circular side thereof such that the workpiece is exposed at the first circular side thereof (pp. [0038]; fig. 1, the second circular side 11b is brought into contact with holding surface 4a of table 4 to expose the first circular side 11a); and a cutting step (pp. [0043-0045]; figs. 3-4, i.e. step S30 and S40) of, after the holding step, with an annular cutting blade (item 12; figs. 2-4) including a first annular cutting edge portion (designated in annotated fig. 4B below) and a second annular cutting edge portion (designated in annotated fig. 4B below). allowing the first annular cutting edge portion to cut into a first region of the outer peripheral portion (designated in annotated fig. 4B below) and also allowing the second annular cutting edge portion to cut into a second region of the outer peripheral portion (designated in annotated fig. 4B below), the second region being located on an outer side (second region is on an outer side, i.e. external boundary, of the first region in a radial direction of the workpiece), in a radial direction of the workpiece (designated in annotated fig. 4B below), of the first region, and moving the cutting blade relative to and along the outer peripheral portion of the workpiece (pp. [0043]; cutting blade is moved along arrow in view of fig. 4B), whereby the outer peripheral portion of the workpiece is cut (outer peripheral portion 11c is cut; pp. [0043] and [0045]; figs. 3-4). PNG media_image1.png 496 520 media_image1.png Greyscale Annotated Fig. 4B. Okamura does not explicitly disclose wherein the second annular cutting edge portion is less prone to consumption than the first annular cutting edge portion (consistent with applicant’s disclosure, pp. [0043-0046], the abrasive grains in the second annular cutting edge portion having higher concentration than the abrasive grains in the first annular cutting edge portion). However, the embodiment of fig. 3 in Wiand (US Patent No. 4,131,436) teaches an annular cutting blade (item 106) used for grinding the edges of glass or lenses (col. 2, ll. 1-5), wherein the annular cutting blade has a first annular cutting edge portion (item 8; fig. 3) and a second annular cutting edge portion (item 7; fig. 3), wherein the second annular cutting edge portion is less prone to consumption that the first annular cutting edge portion (second annular cutting edge portion 7 has high concentration of diamond particles, i.e. abrasive grains, than first annular cutting edge portion 8 with lower concentration of diamond particles). Both Okamura and Wiand disclose grinding wheels to cut into an outer peripheral edge portion of a workpiece. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the annular cutting blade having a consistent abrasive surface, as disclosed in Okamura, with the annular cutting blade having a higher number of abrasive particles in the center edge portion of the blade, as taught in Wiand, to achieve the predictable result of processing the outer peripheral portion of the workpiece. Further, processing the workpiece with a cutting blade having a greater amount of abrasive particle sin the center of the blade, as taught in Wiand, extends the useful life of the blade in a more practical and less complex means (Wiand; col. 2, ll. 56-61 and col. 4, ll. 44-59). Regarding claim 2, Okamura as modified discloses the processing method as claimed in claim 1, wherein the cutting blade further includes a third annular cutting edge portion (Wiand; item 9, fig. 3) that is more prone to consumption than the first annular cutting edge portion (third annular cutting edge portion 3 is more prone to consumption, i.e. less concentration of abrasive grains, than the first annular cutting edge portion 8; col. 3, ll. 18-25). Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Okamura (US 2022/0184768) in view of Wiand (US Patent No. 4,131,436) and further in view of Secco d’Aragona (US Patent No. 6,113,721). Regarding claim 5, Okamura as modified discloses the processing method as claimed in claim 1, wherein the workpiece is a first wafer (item 11; figs. 1-4) chamfered at an outer peripheral portion (pp. [0033]; outer peripheral portion is chamfered; figs. 1 and 4). Okamura does not disclose wherein the workpiece is a bonded wafer obtained by bonding, with a second wafer, and, in the cutting step, the cutting blade is allowed to cut into the bonded wafer from the first circular side, where the first wafer is arranged, to a position that does not reach the second circular side. Secco d’Aragona (US Patent No. 6,113,721) teaches a processing method comprising a bonded wafer (fig. 1), wherein the processing, i.e. grinding and polishing, is applied to the edge of a first wafer (item 12; fig. 1) and does not teach the second wafer (item 10; figs. 1 and 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the workpiece, as disclosed in Okamura, to be a bonded wafer having a second wafer bonded with the first wafer, as taught in Secco d’Aragona, in order to avoid chipping of the first wafer in which the cutting step is applied (Secco d’Aragona; abstract and col. 1, ll. 43-47). The modified bonded wafer results in the cutting step, the cutting blade is allowed to cut into the bonded wafer from the first circular side (i.e. top circular side, item 11a in Okamura), where the first wafer is arranged, to a position that does not reach the second circular side (as modified from Secco d’Aragona, processing method applied is only to the outer peripheral edge of first wafer, corresponding to first wafer in Okamura). Regarding claim 6, Okamura as modified discloses the processing method as claimed in claim 2, wherein the workpiece is a first wafer (item 11; figs. 1-4) chamfered at an outer peripheral portion (pp. [0033]; outer peripheral portion is chamfered; figs. 1 and 4). Okamura does not disclose wherein the workpiece is a bonded wafer obtained by bonding, with a second wafer, and, in the cutting step, the cutting blade is allowed to cut into the bonded wafer from the first circular side, where the first wafer is arranged, to a position that does not reach the second circular side. Secco d’Aragona (US Patent No. 6,113,721) teaches a processing method comprising a bonded wafer (fig. 1), wherein the processing, i.e. grinding and polishing, is applied to the edge of a first wafer (item 12; fig. 1) and does not teach the second wafer (item 10; figs. 1 and 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the workpiece, as disclosed in Okamura, to be a bonded wafer having a second wafer bonded with the first wafer, as taught in Secco d’Aragona, in order to avoid chipping of the first wafer in which the cutting step is applied (Secco d’Aragona; abstract and col. 1, ll. 43-47). The modified bonded wafer results in the cutting step, the cutting blade is allowed to cut into the bonded wafer from the first circular side (i.e. top circular side, item 11a in Okamura), where the first wafer is arranged, to a position that does not reach the second circular side (as modified from Secco d’Aragona, processing method applied is only to the outer peripheral edge of first wafer, corresponding to first wafer in Okamura). Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Okamura (US 2022/0184768) in view of Wiand (US Patent No. 4,131,436) and further in view of Shimizu (JP20170159590), as provided by Examiner. Regarding claim 9, Okamura as modified discloses the processing method as claimed in claim 1, wherein the first annular cutting edge portion and the second annular cutting edge portion both contain abrasive grains and a binder (Wiand; abrasive grains defined as diamond materials, binder defined as metallic matrix; col. 2, ll. 46-50), and the abrasive grains contained in the second annular cutting edge portion are higher in concentration than the abrasive grains contained in the first annular cutting edge portion (Wiand; col. 3, ll. 18-25). Okamura as modified by Wiand does not disclose the abrasive grains contained in the second annular cutting edge portion are greater in grain size than the abrasive grains contained in the first annular cutting edge portion. Wiand contemplates the abrasive edge portion(s) may be made of generally uniform materials, however some variation in materials can be tolerated (Wiand; col. 3, ll. 49-56). Therefore, Shimizu (JP20170159590) teaches annular cutting blades (items 6a and 6b; figs. 2-3) for a processing method on a disk-shaped workpiece (item 11; pp. [0001]; figs. 1-2), wherein the cutting blades include first annular cutting blade (item 10a; pp. [0025-0026]; figs. 2a-2b) and a second annular cutting blade (item 10b; pp. [0034-00335]; figs. 3a-3b), wherein the second annular cutting blade is less prone to consumption than the first annular cutting blade (pp. [0034-0035]; second annular cutting 10b is thicker and abrasive grain size is larger than the first annular cutting blade 10a; consistent with instant disclosure in which grain size in second annular cutting edge portion is greater to be less prone to consumption), analogous to the configuration in Wiand. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the abrasive grains in the second annular cutting edge portion, as disclosed in Okamura in view of Wiand, to be greater in grain size than the abrasive grains in the first annular cutting edge portion, as taught in Shimizu, in order to assist in prevent chipping of the workpiece during the processing method, while also suppressing clogging of the cutting blade during use (pp. [0011] in Shimizu). Regarding claim 10, Okamura as modified discloses the processing method as claimed in claim 2, wherein the first annular cutting edge portion and the second annular cutting edge portion both contain abrasive grains and a binder (Wiand; abrasive grains defined as diamond materials, binder defined as metallic matrix; col. 2, ll. 46-50), and the abrasive grains contained in the second annular cutting edge portion are higher in concentration than the abrasive grains contained in the first annular cutting edge portion (Wiand; col. 3, ll. 18-25). Okamura as modified by Wiand does not disclose the abrasive grains contained in the second annular cutting edge portion are greater in grain size than the abrasive grains contained in the first annular cutting edge portion. Wiand contemplates the abrasive edge portion(s) may be made of generally uniform materials, however some variation in materials can be tolerated (Wiand; col. 3, ll. 49-56). Therefore, Shimizu (JP20170159590) teaches annular cutting blades (items 6a and 6b; figs. 2-3) for a processing method on a disk-shaped workpiece (item 11; pp. [0001]; figs. 1-2), wherein the cutting blades include first annular cutting blade (item 10a; pp. [0025-0026]; figs. 2a-2b) and a second annular cutting blade (item 10b; pp. [0034-00335]; figs. 3a-3b), wherein the second annular cutting blade is less prone to consumption than the first annular cutting blade (pp. [0034-0035]; second annular cutting 10b is thicker and abrasive grain size is larger than the first annular cutting blade 10a; consistent with instant disclosure in which grain size in second annular cutting edge portion is greater to be less prone to consumption), analogous to the configuration in Wiand. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the abrasive grains in the second annular cutting edge portion, as disclosed in Okamura in view of Wiand, to be greater in grain size than the abrasive grains in the first annular cutting edge portion, as taught in Shimizu, in order to assist in prevent chipping of the workpiece during the processing method, while also suppressing clogging of the cutting blade during use (pp. [0011] in Shimizu). Allowable Subject Matter Claims 3-4 and 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Further, claims 7-8 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: Regarding claim 3, the closest art of record, Okamura (US 2022/0184768) in view of Wiand (US Patent No. 4,131,436), discloses the processing method as claimed in claim 2, as used in the above rejection, wherein the cutting blade has a stacked structure (Wiand; fig. 3), the second annular cutting edge portion is in contact with the first annular cutting edge portion, and wherein, in the cutting step, the third annular cutting step portion is arranged in a third region (defined as outer region) located on an outer side, in the radial direction, of the outer peripheral portion (when in use, i.e. cutting step, the third annular cutting edge portion is in a third region, i.e. outer side of workpiece in Okamura). Though Wiand discloses a stacked structure with numerous abrasive layers, Wiand, alone or in further combination, does not disclose wherein the stacked structure configuration has the second annular cutting edge portion both in contact with the first cutting edge portion and the third cutting edge portion, as required by the claim, in combination with all additional elements of the claim. Further, regarding claim 3, the art of record, Morikawa (US Patent No. 10,559,471), discloses a processing method (abstract) for a disk-shaped workpiece (item 100; figs. 2 and 6A) having a first circular side (item 90; figs. 5 and 6A) and a second circular side (item 40; figs. 5 and 6A), wherein the processing method comprises: a holding step (col. 6, ll. 45-50; figs. 6A) of holding the workpiece; and a cutting step (col. 6, ll. 51-67; defined as steps in view of figs. 5 and 6B-6C, i.e. step S20) of, after the holding step, with an annular cutting blade (item 500; fig. 3) including a first annular cutting edge portion (item 500A; figs. 3 and 6B) and a second annular cutting edge portion (item 500B of blade 500; figs. 3 and 6C) that is less prone to consumption than the first annular cutting edge portion kept rotating (col. 8, ll. 26-39; second annular cutting edge portion 500B includes item 520 which has higher abrasive grit than item 510 on first annular cutting edge portion 500A; consistent with instant disclosure in which grain size in second annular cutting edge portion is greater to be less prone to consumption, pp. [0043-0044] in instant disclosure), as required by claim 1. Morikawa discloses wherein the annular cutting blade may have a structure having three or more stages, i.e. a third annular cutting edge portion, wherein the third annular cutting edge portion is more prone to consumption than the first annular cutting edge portion (e.g. less or no abrasive grains, consistent with applicant’s disclosure), as evidenced by Gissing (US 8,113,920), as required by claim 2. Morikawa as modified does not teach, suggest, or make obvious wherein the cutting blade has a stacked structure such that the first annular cutting edge portion is contact with the second cutting edge portion and the second cutting edge portion is contact with the third cutting edge portion, as required by the claim, in combination with all additional elements of the claim. Claims 4, 7-8, and 11-12 are objected to since they are dependent on claim 3. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIDNEY D FULL whose telephone number is (571)272-6996. The examiner can normally be reached Monday-Friday, 7:00a.m.-2:30p.m.. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at (571)272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SIDNEY D FULL/Examiner, Art Unit 3723
Read full office action

Prosecution Timeline

Jul 25, 2024
Application Filed
Sep 01, 2026
Non-Final Rejection mailed — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
70%
Grant Probability
99%
With Interview (+67.6%)
2y 10m (~8m remaining)
Median Time to Grant
Low
PTA Risk
Based on 153 resolved cases by this examiner. Grant probability derived from career allowance rate.

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