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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Claims 2-6 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 2 recites the limitation "the polishing condition" in line 2. It is unclear if applicant intends this limitation to be “the polishing condition of the high polishing-rate process,” “the polishing condition of the low polishing-rate process,” or “the polishing conditions” rendering claim 2 and its dependents indefinite. For the purpose of examination, it has been assumed that the limitation should read “the polishing conditions.”
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 4 of copending Application No. 19/134460 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is not patentably distinct from claim 1 and 4 of the reference application. Claim comparison below, differences are in bold:
Instant Application
Reference Application
[Claim 1] A substrate polishing method of polishing a surface of a substrate, comprising: rotating the substrate about its own axis, while causing the substrate and a polishing head to make a circular motion relative to each other; and pressing a polishing tape against the surface of the substrate by the polishing head while feeding the polishing tape in a longitudinal direction thereof to thereby polish a central region including a center of the substrate and an outer region adjacent to the central region, wherein a process of polishing the central region and the outer region includes at least two polishing processes performed under different polishing conditions, and the at least two polishing processes include: a low polishing-rate process performed under a polishing condition such that a polishing rate in the central region is lower than a polishing rate in the outer region; and a high polishing-rate process performed under a polishing condition such that a polishing rate in the central region is higher than a polishing rate in the outer region.
Claim 1. A substrate processing method comprising: rotating a substrate about its own axis; and processing a surface of the substrate by pressing a processing tape against the surface by a pressing member of a processing head while the pressing member is tilted in a first direction with respect to a predetermined pressing direction and the processing tape is fed in a longitudinal direction thereof, and then pressing the processing tape against the surface by the pressing member while the pressing member is tilted in a second direction opposite to the first direction with respect to the pressing direction and the processing tape is fed in the longitudinal direction thereof, wherein the first direction and the second direction are directions along the longitudinal direction of the processing tape on the pressing member.
Claim 4. The substrate processing method according to claim 1, wherein a central portion of the surface of the substrate is processed by the processing tape pressed by the pressing member against the central portion including the center of the surface.
It should be noted that the first pressing process of the reference application would be equivalent to either the low polishing-rate process or the high polishing-rate process as claimed in the instant application, depending on which tilt direction is chosen for the first process of the reference application, and the second pressing process of the reference application would be equivalent to the other process of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii et al. US 20190184517 A1 (herein Ishii-US).
Regarding claim 1, Ishii-US teaches a substrate polishing method (abstract) of polishing a surface of a substrate (W), comprising: rotating the substrate (W) about its own axis (para 32, ln 8-9), while causing the substrate (W) and a polishing head (21) to make a circular motion relative to each other (para 37, ln 13-15); and pressing a polishing tape against the surface of the substrate (W) by the polishing head (21) while feeding the polishing tape in a longitudinal direction thereof (para 37, ln 2-5) to thereby polish a central region including a center of the substrate (W) and an outer region adjacent to the central region (para 62, ln 1-2), wherein a process of polishing the central region and the outer region includes at least two polishing processes performed under different polishing conditions (para 62, ln 1-4), and the at least two polishing processes include: a low polishing-rate process performed under a polishing condition such that a polishing rate in the central region is lower than a polishing rate in the outer region (para 62, ln 2-6); and a high polishing-rate process performed under a polishing condition such that a polishing rate in the central region is higher than a polishing rate in the outer region (para 62, ln 1-2).
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.
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) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. US 20190184517 A1 (herein Ishii-US) in view of Kobayashi et al. US 20190118335 A1 (herein Kobayashi).
Regarding claim 2, Ishii-US teaches the limitations of claim 1 as claimed.
Ishii-US does not teach that the polishing conditions that differentiate the processes include any of the listed parameters.
However, in a related device, Kobayashi teaches a polishing method (abstract) wherein a parameter of polishing conditions includes at least one of a tape pressing force generated by the polishing head (para 119, ln 11-16), a tape tension of the polishing tape, a position of a guide roller configured to guide the polishing tape, the guide roller being arranged adjacent to the polishing head, an outer diameter of the guide roller, a length of a pressing member of the polishing head, the pressing member being configured to press the polishing tape against the substrate, an angle of the pressing member inclined downwardly toward the center of the substrate, and a hardness of the pressing member. Kobayashi further teaches that this advantageously reduces the difference in polishing rate between the central and outer areas of the wafer (para 119, ln 16-19). It would have been obvious to a person skilled in the art, prior to filing date of instant application, to apply the different force parameters in the center and outer regions of Kobayashi to two processes of the method of Ishii-US to advantageously reduce the difference in polishing rate between the two portions of the substrate (para 119, ln 16-19).
Regarding claim 3, the combination of Ishii-US and Kobayashi teach the tape pressing force in the polishing condition (para 119, ln 11-16) of the high polishing-rate process (para 62, ln 1-2 of Ishii-US) is larger than the tape pressing force in the polishing condition (para 119, ln 11-16) of the low polishing-rate process (para 62, ln 2-6 of Ishii-US).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. US 20190184517 A1 (herein Ishii-US) in view of Kobayashi et al. US 20190118335 A1 (herein Kobayashi) as applied to claim 2 above, and further in view of Seki et al. JP 2011161625 A (herein Seki).
Regarding claim 4, the combination of Ishii-US and Kobayashi teach the limitations of claim 2 as claimed.
The combination of Ishii-US and Kobayashi does not teach the polishing condition having separate tensions in the two processes.
However, in a related device, Seki teaches a substrate polishing method (abstract) which discloses that increased tension in a polishing tape reduces the polishing rate (para 111, ln 6-10). It would have been obvious to a person skilled in the art, prior to filing date of instant application, to apply the inverse tension to polishing rate teaching of Seki to the method of the combination of Ishii-US and Kobayashi so that the tape tension of the polishing tape in the polishing condition of the high polishing-rate process is smaller than the tape tension of the polishing tape in the polishing condition of the low polishing-rate process. As each element would perform the same function it does separately with predictable results.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. US 20190184517 A1 (herein Ishii-US) in view of Kobayashi et al. US 20190118335 A1 (herein Kobayashi) as applied to claim 2 above, and further in view of Ishii et al. EP 3483924 A1 (herein Ishii-EP).
Regarding claim 5, the combination of Ishii-US and Kobayashi teach the limitations of claim 2 as claimed.
The combination of Ishii-US and Kobayashi does not teach a guide roller which changes position between the two processes.
However in a related device Ishii-EP discloses two polishing processes one where a substrate is processed with a 0deg angle to a polishing head (see fig. 1) and another where the substrate is processed at an angle to the polishing head, where with the angle sloped downward toward the center of the substrate a polishing rate in the center is lowered (para 74, ln 19-23) such that a polishing head (50) in which the height of the tape rollers 71 and 72 are located is higher when above the center of the wafer in angled condition than they would be in the 0deg position (this position is described in para 74, ln 19-23 and similar to that depicted in fig 14). Ishii-EP further teaches that this advantageously allows for addressing wafers with different surface conditions in different regions (para 73, ln 11-13). It would have been obvious to a person skilled in the art, prior to filing date of instant application, to apply the different polishing angles and roller heights of Ishii-EP to the combination of Ishii-US and Miyamoto to advantageously address wafers with different surface conditions in different regions (para 73, ln 11-13), resulting in a position of a guide roller in the polishing condition of the high-polishing rate process being higher than the position of the guide roller in the polishing condition of the low polishing rate process.
Regarding claim 6, the combination of Ishii-US and Kobayashi teach the limitations of claim 2 as claimed.
The combination of Ishii-US and Kobayashi does not teach a difference in the angle of the polishing head between the two processes.
However, in a related device Ishii-EP discloses two polishing processes one where a substrate is processed with a 0deg angle to a polishing head (see fig. 1) and another where the substrate is processed at an angle to the polishing head, where with the angle sloped downward toward the center of the substrate a polishing rate in the center is lowered (para 74, ln 19-23). Ishii-EP further teaches that this advantageously allows for addressing wafers with different surface conditions in different regions (para 73, ln 11-13). It would have been obvious to a person skilled in the art, prior to filing date of instant application, to apply the different polishing angles and roller heights of Ishii-EP to the combination of Ishii-US and Miyamoto to advantageously address wafers with different surface conditions in different regions (para 73, ln 11-13) resulting in the angle of the pressing member inclined downwardly toward the center of the substrate in the polishing condition of the high polishing-rate process being smaller (i.e. 0deg) than the angle of the pressing member inclined downwardly toward the center of the substrate in the polishing condition of the low polishing-rate process.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Miyamoto TW M546882 U as it relates to tape style polishing devices with guide rollers that change heights, angle of the tape, and polishing rate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRANT D HAY whose telephone number is (571)272-9510. The examiner can normally be reached Mon-Fri 8:30am-3:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.D.H./Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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