Prosecution Insights
Last updated: October 02, 2026
Application No. 18/816,079

DIVIDING METHOD

Final Rejection §103
Filed
Aug 27, 2024
Priority
Sep 12, 2023 — JP 2023-147657
Examiner
DONG, LIANG
Art Unit
3724
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
DISCO Corporation
OA Round
2 (Final)
53%
Grant Probability
Moderate
3-4
OA Rounds
10m
Est. Remaining
86%
With Interview

Examiner Intelligence

Grants 53% of resolved cases
53%
Career Allowance Rate
268 granted / 504 resolved
-16.8% vs TC avg
Strong +33% interview lift
Without
With
+32.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
66 currently pending
Career history
575
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
52.8%
+12.8% vs TC avg
§102
18.8%
-21.2% vs TC avg
§112
26.8%
-13.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 504 resolved cases

Office Action

§103
DETAILED ACTION Response to Amendment The Amendment filed 6/23/2026 has been entered. Claims 1-15 remain pending in the application. 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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Horsfield (US 20070119892 A1) in view of Yamamoto (US 20200335396 A1). Regarding claim 1, Horsfield teaches a method for dividing a workpiece in which devices are respectively formed in regions sectioned by a plurality of intersecting planned dividing lines, the method comprising: forming a first cutting groove (25) not reaching a rear surface of a workpiece by causing a unknown tool to cut into from a front surface of the workpiece along the planned dividing lines (paragraph 0042); after forming the first cutting groove, forming a second cutting groove (25’) not reaching a bottom portion of the first cutting groove by causing the unknown tool to cut into from the rear surface of the workpiece along the first cutting groove (see Figure 8 and paragraph 0042); and after forming the second cutting groove, dividing the workpiece along the planned dividing lines by applying external force to the workpiece (paragraph 0042). Horsfield fails to teach a rotating cutting blade, wherein the applying external force comprises applying a radial tensile force to the workpiece by expanding a dicing tape attached to the workpiece. Yamamoto teaches a method for dividing a workpiece, the method comprising: forming a first cutting groove not reaching a rear surface of a workpiece by causing a rotating cutting blade to cut into from a front surface of the workpiece along the planned dividing lines (see Figure 4A), wherein the applying external force comprises applying a radial tensile force to the workpiece by expanding a dicing tape (17) attached to the workpiece (see Figures 6A-B). It would have been obvious to one of ordinary skill in the art to modify the method of Horsfield to cut the workpiece via a rotating cutting blade, as taught by Yamamoto, in order to provide a cutting tool for cutting a groove for dividing the work piece (abstract of Yamamoto). It also would have been obvious to one of ordinary skill in the art to modify the method of Horsfield to add the bending step, as taught by Yamamoto, in order to and applying a radial tensile force to the workpiece by expanding a dicing tape attached to the workpiece (for better breaking the work piece (see Figure 4A of Yamamoto). Regarding claim 2, modified Horsfield further teaches a distance between the bottom portion of the first cutting groove and a bottom portion of the second cutting groove is equal to or smaller than a thickness of the workpiece. Modified Horsfield fails to teach 1/10 equal to or smaller than a thickness of the workpiece. Furthermore, with respect to the specific ratio of a distance is 1/10 equal to or smaller than a thickness of the workpiece, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific distance set forth in the claim to get the desired break ratio of the work for the end user. Regarding claim 3, modified Horsfield further teaches the workpiece includes a sapphire substrate, a silicon carbide (SiC) substrate, or a glass substrate (paragraph 0034 of Horsfield). Regarding claim 4, modified Horsfield further teaches the workpiece has a thickness of unknown value (see Figure 6). Modified Horsfield fails to teach 750 µm or more. Furthermore, with respect to the specific thickness of 750 µm or more, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific thickness set forth in the claim in order for the end user to work on the desired work piece. Regarding claim 5, modified Horsfield further teaches a distance between the bottom portion of the first cutting groove and a bottom portion of the second cutting groove is unknown range (see Figure 6) Modified Horsfield fails to teach between 30 µm and 75 µm. Furthermore, with respect to the specific range of between 30 µm and 75 µm, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific range set forth in the claim in order for the end user to work on the desired work piece. Regarding claim 6, modified Horsfield further teaches a distance between the bottom portion of the first cutting groove and a bottom portion of the second cutting groove is unknown value (see Figure 6). Modified Horsfield fails to teach equal to or smaller than 1/10 of a thickness of the workpiece and equal to or larger than 30/750 of the thickness of the workpiece. Furthermore, with respect to the specific ratio of a distance is equal to or smaller than 1/10 of a thickness of the workpiece and equal to or larger than 30/750 of the thickness of the workpiece, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific distance set forth in the claim to get the desired break ratio of the work for the end user. Regarding claims 7 and 14, modified Horsfield further teaches a method for dividing a workpiece in which devices are respectively formed in regions sectioned by a plurality of intersecting planned dividing lines, the method comprising: forming a first cutting groove (25) not reaching a rear surface of a workpiece by causing a unknown tool to cut into from a front surface of the workpiece along the planned dividing lines; after forming the first cutting groove (paragraph 0042), forming a second cutting groove (25’) not reaching a bottom portion of the first cutting groove by causing the rotating cutting blade to cut into from the rear surface of the workpiece along the first cutting groove; and after forming the second cutting groove, dividing the workpiece along the planned dividing lines by applying external force to the workpiece (see Figure 8 and paragraph 0042), wherein the workpiece has a thickness of unknown value. Horsfield fails to teach a rotating cutting blade, the workpiece has a thickness of 750 µm or more (as required by claim 7), or 1 mm or less (as required by claim 14). Yamamoto teaches a method for dividing a workpiece, the method comprising: forming a first cutting groove not reaching a rear surface of a workpiece by causing a rotating cutting blade to cut into from a front surface of the workpiece along the planned dividing lines (see Figure 4A), wherein the applying external force comprises applying a radial tensile force to the workpiece by expanding a dicing tape (17) attached to the workpiece (see Figures 6A-B). It would have been obvious to one of ordinary skill in the art to modify the method of Horsfield to cut the workpiece via a rotating cutting blade, as taught by Yamamoto, in order to provide a cutting tool for cutting a groove for dividing the work piece (abstract of Yamamoto). Furthermore, with respect to the specific thickness of 750 µm or more or 1 mm or less., the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific thickness set forth in the claim in order for the end user to work on the desired work piece. Regarding claim 8, modified Horsfield further teaches a distance between the bottom portion of the first cutting groove and a bottom portion of the second cutting groove is equal to or smaller than a thickness of the workpiece. Modified Horsfield fails to teach 1/10 equal to or smaller than a thickness of the workpiece. Furthermore, with respect to the specific ratio of a distance is 1/10 equal to or smaller than a thickness of the workpiece, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific distance set forth in the claim to get the desired break ratio of the work for the end user. Regarding claim 9, modified Horsfield further teaches a distance between the bottom portion of the first cutting groove and a bottom portion of the second cutting groove is unknown range (see Figure 6) Modified Horsfield fails to teach between 30 µm and 75 µm. Furthermore, with respect to the specific range of between 30 µm and 75 µm, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific range set forth in the claim in order for the end user to work on the desired work piece. Regarding claim 10, modified Horsfield further teaches a distance between the bottom portion of the first cutting groove and a bottom portion of the second cutting groove is unknown value (see Figure 6). Modified Horsfield fails to teach equal to or smaller than 1/10 of a thickness of the workpiece and equal to or larger than 30/750 of the thickness of the workpiece. Furthermore, with respect to the specific ratio of a distance is equal to or smaller than 1/10 of a thickness of the workpiece and equal to or larger than 30/750 of the thickness of the workpiece, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the method of Horsfield to have the specific distance set forth in the claim to get the desired break ratio of the work for the end user. Regarding claim 11, modified Horsfield teaches all elements of the current invention as set forth in claim 7 above. Modified Horsfield fails to teach the applying external force comprises applying a radial tensile force to the workpiece by expanding a dicing tape attached to the workpiece. It also would have been obvious to one of ordinary skill in the art to modify the method of Horsfield to add the bending step, as taught by Yamamoto, in order to and applying a radial tensile force to the workpiece by expanding a dicing tape attached to the workpiece (for better breaking the work piece (see Figure 4A of Yamamoto). Regarding claim 12, modified Horsfield further teaches the workpiece includes a sapphire substrate, a silicon carbide (SiC) substrate, or a glass substrate (paragraph 0034 of Horsfield). Regarding claim 13, modified Horsfield further teaches the workpiece comprises a semiconductor wafer (paragraph 0034 of Horsfield). Regarding claim 15, modified Horsfield further teaches the workpiece comprises a semiconductor wafer (paragraph 0034 of Horsfield). Response to Arguments Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive. Applicant’s arguments with respect to claim(s) 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LIANG DONG whose telephone number is (571)270-0479. The examiner can normally be reached Monday - Thursday 8 AM-6 PM. 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, Ashley Boyer can be reached at 571-272-4502. 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. /LIANG DONG/Examiner, Art Unit 3724 3/19/2026
Read full office action

Prosecution Timeline

Aug 27, 2024
Application Filed
Mar 24, 2026
Non-Final Rejection mailed — §103
Jun 23, 2026
Response Filed
Aug 25, 2026
Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
53%
Grant Probability
86%
With Interview (+32.9%)
2y 11m (~10m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 504 resolved cases by this examiner. Grant probability derived from career allowance rate.

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