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 .
Double Patenting
2. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
3. Claim 1-4, 9, 10, 12 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 of copending Application No. 18/858,175 (reference application; Now US 2025/0147432). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The following Table will match the claim of current application vs. 18/858,175 Claims
18/858,192 Claims (Current application) 18/858,175 Claims
1 1
2 2
3 3
4 4
9 11
10 12
12 14
4. 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.
5. Claim 5-8, 11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-10 of copending Application No. 18/858,175 in view of Sandoh (US 2021/0104408 A1).
This is a provisional nonstatutory double patenting rejection.
Claims 5 and 7 differs from claim 1 of copending application 18/858,175 by further disclose adhering a light-emitting material on a conductor surface of the substrate. Sandoh discloses adhering a light-emitting material (photoresist material having fluorescence property) on a conductor (metal) surface of the substrate (paragraph 0027-0030, 0042-0050; Fig 6A-6B). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify copending application 18/858,175 in view of Sandoh by adhering a light-emitting material on a conductor surface of the substrate because it helps to create conductive pattern on the semiconductor device.
As to claims 6 and 8, copending application 18/858,175 claims 7 and 10 discloses the forming of the resist pattern includes forming the resist pattern having a thickness of greater than or equal to 0.05 µm and less than or equal to 500 µm.
Claim 11 differs from claim 1 of copending application 18/858,175 by further disclose a light-emitting material is adhered on a conductor surface of the substrate to be subjected to outer appearance inspection in performing the outer appearance inspection. Sandoh discloses a light-emitting material is adhered on a conductor surface of the substrate to be subjected to outer appearance inspection in performing the outer appearance inspection (paragraph 0027-0030, 0042-0050; Fig 6A-6B). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify copending application 18/858,175 in view of Sandoh by having a light-emitting material is adhered on a conductor surface of the substrate to be subjected to outer appearance inspection in performing the outer appearance inspection substrate because it helps to create conductive pattern on the semiconductor device and reduces defect.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
8. Claims 1-3, 9-10 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Sato (JP 2003243290 A1).
As to claim 1, Sato discloses a resist pattern inspection method comprising
performing an outer appearance inspection of a resist pattern based on light emission (fluorescence emission) from a substrate on which the resist pattern is formed (abstract, paragraph 0007-0015).
As to claim 2, Sato discloses performing the outer appearance inspection includes detecting a contour (image of the resist) of the resist pattern based on light emission from the substrate, and performing the outer appearance inspection of the resist pattern based on the detected contour (abstract, paragraph 0007-0015).
As to claim 3, Sato discloses wherein performing the outer appearance inspection includes comparing the detected contour with pattern data for forming the resist pattern (paragraph 0007-0009, 0012-0015).
As to claim 9, Satao discloses a substrate selection method comprising:
performing an outer appearance inspection on a resist pattern based on light emission from a substrate on which the resist pattern is formed; and
evaluating the resist pattern based on the outer appearance inspection in performing the outer appearance inspection (abstract, paragraph 0007-0015).
As to claim 10, Sato discloses evaluating includes evaluating the resist pattern according to number of defects of the resist pattern (abstract, paragraph 0003-0009, 0012, 0014, 0016, 0021).
9. Claims 1-3, 5, 7, 9-11 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Tashiro et al. (US 2004/233054)
As to claim 1, Tashiro discloses a resist pattern inspection method comprising
performing an outer appearance inspection of a resist pattern (23) based on light emission (fluorescence emission) from a substrate on which the resist pattern is formed (abstract, paragraph 0008-0023).
As to claim 2, Tashiro discloses performing the outer appearance inspection includes detecting a contour (image of the resist) of the resist pattern based on light emission from the substrate, and performing the outer appearance inspection of the resist pattern based on the detected contour (abstract, paragraph 0008-0031).
As to claim 3, Tashiro discloses wherein performing the outer appearance inspection includes comparing the detected contour with pattern data for forming the resist pattern (paragraph 0007-0009, 0050-0053, i.e. compare the shape of the obtained resist pattern (23) with a reference pattern.
As to claim 5, Tashiro discloses forming the resist pattern (23) on the substrate (20);
Adhering a light-emitting material (fluorescence) on a conductor (stainless steel 21) of the substrate (Fig 2, Fig 6, paragraph 0009-0017; 0044-0054).
As to claim 7, Tashiro discloses a resist pattern manufacturing method comprising:
forming a resist pattern (23) on a substrate (20); and
adhering a light-emitting material (fluorescence material) on a conductor surface (stainless steel 21) of the substrate (Fig 2, Fig 6, paragraph 0009-0017; 0044-0054).
As to claim 9, Tashiro discloses a substrate selection method comprising:
performing an outer appearance inspection on a resist pattern (23) based on light emission from a substrate on which the resist pattern is formed; and
evaluating the resist pattern based on the outer appearance inspection in performing the outer appearance inspection (abstract, paragraph (abstract, paragraph 0008-0023).
As to claim 10, Tashiro discloses evaluating includes evaluating the resist pattern according to number of defects of the resist pattern (abstract, paragraph 0048-0054).
As to claim 11, Tashiro discloses wherein a light-emitting material (fluorescence) is adhered on a conductor surface (stainless steel) of the substrate to be subjected to outer appearance inspection in performing the outer appearance inspection (Fig 2, Fig 6, paragraph 0009-0017; 0044-0054).
10. Claims 1-2, 5-12 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Sandoh et al. (US 2021/0104408 A1)
As to claim 1, Sandoh discloses a resist pattern inspection method comprising
performing an outer appearance inspection of a resist pattern (25) based on light emission (fluorescence emission) from a substrate on which the resist pattern is formed (abstract, paragraph 0042-0063, Fig 4, Fig 5, Fig 6A-6B, Fig 10 step S40;).
As to claim 2, Sandoh discloses performing the outer appearance inspection includes detecting a contour of the resist pattern based on light emission from the substrate, and performing the outer appearance inspection of the resist pattern based on the detected contour (abstract, paragraph 0042-0063, Fig 4, Fig 5, Fig 6A-6B, Fig 10 step S40;).
As to claim 5, Sandoh discloses forming the resist pattern (25) on the substrate (11);
Adhering a light-emitting material (fluorescence) on a conductor (metal) of the substrate (paragraph 0027-0030, 0042-0050; Fig 6A-6B).
As to claim 6, Sandoh discloses the forming of the resist pattern includes forming the resist pattern (25) having a thickness of between 2 pm to 6 µm including example of 0.1 µm (see paragraph 0062, Fig 5, within applicant’s range of “greater than or equal to 0.05 µm and less than or equal to 500 µm ).
As to claim 7, Sandoh discloses a resist pattern manufacturing method comprising:
forming a resist pattern (25) on a substrate (11); and
adhering a light-emitting material (fluorescence) on a conductor surface (metal) of the substrate (paragraph 0027-0030, 0042-0050 Fig 6A-6B).
As to claim 8, Sandoh discloses the forming of the resist pattern includes forming the resist pattern (25) having a thickness of between 2 pm to 6 µm including example of 0.1 µm (see paragraph 0062, Fig 5, within applicant’s range of “greater than or equal to 0.05 µm and less than or equal to 500 µm ).
As to claim 9, Sandoh discloses a substrate selection method comprising:
performing an outer appearance inspection on a resist pattern (25) based on light emission from a substrate on which the resist pattern is formed; and
evaluating the resist pattern based on the outer appearance inspection in performing the outer appearance inspection (abstract, 0042-0060, fig 4, Fig 5, Fig 6A-6B, Fig 9).
As to claim 10, Sandoh discloses evaluating including evaluating the resist pattern according to number of defects of the resist pattern (i.e. detect defect or failures; See paragraph 0010, 0050, 0063
As to claim 11, Sandoh discloses wherein a light-emitting material (fluorescence) is adhered on a conductor surface (metal) of the substrate to be subjected to outer appearance inspection in performing the outer appearance inspection (paragraph 0027-0030, 0042-0050; Fig 6A-6B).
As to claim 12, Sandoh discloses a manufacturing method for a semiconductor package substrate comprising:
forming a conductor pattern (metal) by performing etching process on a substrate in which the evaluation of the resist pattern in the substrate selection method (paragraph 0027-0028, 0056-0068).
Claim Rejections - 35 USC § 103
11. 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.
12. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP 2003/243290 A) as applied to claim 1 above, and further in view of Kanai (JP 2000/193596 A).
As to claim 4, Sato discloses performing the outer appearance inspection of the resist pattern. However, Sato fails to disclose measuring a line width of the resist pattern based on the detected contour. Kanai teaches measuring a line width of the resist pattern based on the detected contour (paragraph 0005-0011, 0034-0035, 0053-064). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Sato in view of Kanai by measuring a line width of the resist pattern based on the detected contour because it helps to detect defect (paragraph 0004).
13. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sandoh (US 2021/0104408 A1) as applied to claim 1 above, and further in view of Kanai (JP 2000/193596 A).
As to claim 4, Sandoh discloses performing the outer appearance inspection of the resist pattern. However, Sandoh fails to disclose measuring a line width of the resist pattern based on the detected contour. Kanai teaches measuring a line width of the resist pattern based on the detected contour (paragraph 0005-0011, 0034-0035, 0053-064). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Sato in view of Kanai by measuring a line width of the resist pattern based on the detected contour because it helps to detect defect (paragraph 0004).
14. Claims 6, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP 2004233054) as applied to claims 1-3, 5, 7 above, and further in view of Kanai (JP 2000/193596 A).
As to claim 6, Tashiro disclose the forming of the resist pattern (23) includes forming the resist pattern having some thickness. As to claim 6, Tashiro fails to disclose a resist thickness of greater than 0.05 µm and less than or equal to 500 µm. Kanai disclose forming a resist pattern having a thickness of 300 nm (paragraph 0053, Note: 300 nm = 0.3 µm, within applicant’s range of greater than 0.05 µm and less than or equal to 500 µm). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tashiro in view of Kanai by having a resist pattern with a thickness of greater than 0.05 µm and less than or equal to 500 µm because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
As to claim 8, Tashiro disclose the forming of the resist pattern (23) includes forming the resist pattern having some thickness. As to claim 8, Tashiro fails to disclose a resist thickness of greater than 0.05 µm and less than or equal to 500 µm. Kanai disclose forming a resist pattern having a thickness of 300 nm (paragraph 0053, Note: 300 nm = 0.3 µm, within applicant’s range of greater than 0.05 µm and less than or equal to 500 µm). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tashiro in view of Kanai by having a resist pattern with a thickness of greater than 0.05 µm and less than or equal to 500 µm because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/ Primary Examiner, Art Unit 1713
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