Prosecution Insights
Last updated: October 02, 2026
Application No. 18/987,473

WORKPIECE PROCESSING METHOD

Non-Final OA §103§112
Filed
Dec 19, 2024
Priority
Jan 09, 2024 — JP 2024-001213
Examiner
MARKMAN, MAKENA
Art Unit
Tech Center
Assignee
DISCO Corporation
OA Round
1 (Non-Final)
60%
Grant Probability
Moderate
1-2
OA Rounds
1y 5m
Est. Remaining
98%
With Interview

Examiner Intelligence

Grants 60% of resolved cases
60%
Career Allowance Rate
198 granted / 331 resolved
At TC average
Strong +39% interview lift
Without
With
+38.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
44 currently pending
Career history
368
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
44.9%
+4.9% vs TC avg
§102
23.4%
-16.6% vs TC avg
§112
27.4%
-12.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 331 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 . Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The Information Disclosure Statement filed on 12/19/2024 is being considered by the Examiner. 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 1-3 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. Regarding claim 1, it is unclear what rotation directions are being imparted in the recitation of “wherein the first trimming step includes rotating the first cutting blade in a rotation direction of cutting the workpiece from the second wafer side toward the first wafer side, and the second trimming step includes rotating the second cutting blade in a rotation direction of cutting the workpiece from the first wafer side toward the second wafer side”. Specifically, defining a rotation direction as “from the first side toward the second side” and “from the second side toward the first side” renders the claimed invention indefinite. When viewing a disc which is rotating clockwise or counterclockwise, the rotation may technically begin at either top or bottom surface toward the other given that the movement is circular. Examiner recommends amending the claim such that the rotational directions are counterclockwise and clockwise. Any claim listed as rejected above but not specifically addressed above has inherited the rejection of a claim specifically addressed above due to dependency therefrom. Claim Rejections - 35 USC § 103 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 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. Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Powers (US 20200176316) in view of Okawa (WO 2018124031A1) and Onuma (JP2016058518A). Regarding claim 1, Powers discloses a workpiece processing method of removing a peripheral edge portion on a first wafer side of a workpiece obtained by bonding a first wafer and a second wafer via a bonding layer (see Abstract), the workpiece processing method comprising: a holding step of holding the second wafer side of the workpiece on a holding surface of a holding table (see Figures 1A, 2A, and 7 regarding the wafer 11 being held on chuck table 4, see also [0035]; see also [0071] disclosing the wafer is fixed such that the back side of the wafer is exposed upward); a first trimming step of cutting and removing the peripheral edge portion of the workpiece on the first wafer side while allowing a first cutting blade to cut into the peripheral edge portion of the workpiece held in the holding step (see [0034], [0036-0040]: wherein first cutting blade 10 cuts the into the peripheral area 23, see Figure 2A; see also [0071-0072]); and a second trimming step of, after the first trimming step, cutting and removing the peripheral edge while allowing a second cutting blade to cut into the peripheral edge portion of the workpiece held in the holding step at a predetermined cut depth (see at least [0056-0060] regarding the second cutting blade 12 cutting and trimming into the peripheral area 23, wherein the second cutting blade 12 cuts into the area at a depth greater than the thickness of the wafer 11). However, Powers does not explicitly teach that the wafer is a bonded wafer, and thus that the second trimming step includes cutting into the bonded wafer from the first wafer side and the second trimming step is performed at a predetermined cut depth deeper than the cut depth of the first trimming step, nor that the first and second cutting blades rotate in opposite directions, i.e. wherein the first trimming step includes rotating the first cutting blade in a rotation direction of cutting the workpiece from the second wafer side toward the first wafer side, and the second trimming step includes rotating the second cutting blade in a rotation direction of cutting the workpiece from the first wafer side toward the second wafer side. However, from the same or similar field of endeavor, Okawa (WO 2018124031A1) teaches the workpiece is obtained by bonding a first wafer and a second wafer via a bonding layer (see lines 113-124, as well as Figures 2 and 7a-7i), that the second trimming step (as well as the first trimming step) takes place such that the tools (211, 231) cut into the peripheral edge portion from the first wafer side (see Figures 7a-7c and 7e-7g regarding the trimming cutting into the same side of the wafer), and wherein the second trimming step is performed at a predetermined cut depth deeper than the cut depth of the first trimming step (see H1 and H2, as well as lines 361-367, 385-387, 403-412). Powers suggests an alternative embodiment in which the wafer (11) is bonded to the carrier substrate (25) prior to the first cutting step, see [0069-0070]. Powers also specifically intimates alternatives to the workpiece type (see [0029] indicating that the wafer is not limited in material, shape, structure, size, and so forth) and contemplates modifications to the invention in at least [0074]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of Powers to include performing the operation on the wafer of Okawa, and to the depth suggested by Okawa. One would be motivated to do so because Powers specifically intimates and suggests alternatives to the workpiece, including an embodiment in which the workpiece comprises two bonded elements; thus, a user would be capable of performing the operation on the workpiece variety already suggested by Powers and taught by Okawa according to a user’s selection. Furthermore, the selection of depth also reflects desired user outcome, as Okawa suggests the depth can be within a range including the increased depth (lines 403-412). The increased depth ensures the intended smooth surfaces are imparted by the secondary trimming tool (see lines 421-435), congruent with the suggestion of Powers in [0057]. From the same or similar field of endeavor, Onuma (JP2016058518A) teaches wherein the first trimming step includes rotating the first cutting blade in a rotation direction of cutting the workpiece from the second wafer side toward the first wafer side, and the second trimming step includes rotating the second cutting blade in a rotation direction of cutting the workpiece from the first wafer side toward the second wafer side (see [0010], [0027-0028], [0038]: the rotational directions of the first cutting blade 48 and the second cutting blade 50 are opposite to each other; see also [0042-0045], as well as Figure 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the opposing rotation directions of first and second cutting elements, as taught by Onuma, into the invention of Powers. One would be motivated to do so in order to decrease the buildup of scrap generated during machining, thus reducing the likelihood of improper trimming and damage to the workpiece and/or apparatus (see [0042], [0044-0045]). Regarding claim 2, Powers in view of Okawa and Onuma teaches the claimed invention as applied above, wherein modified Powers further teaches wherein the first cutting blade in the first trimming step does not cut into the second wafer (please refer to the combination statement as applied above, as well as H1 and H2 of Okawa, Figures 7a-7g, wherein H1 does not extend into the supporting wafer S). Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Powers (US 20200176316) in view of Okawa (WO 2018124031A1) and Onuma (JP2016058518A), and in further view of Sekiya (JP 2012182366). Regarding claim 3, Powers in view of Okawa and Onuma teaches the claimed invention as applied above. However, modified Powers does not explicitly teach wherein an abrasive of at least one of the first cutting blade and the second cutting blade has an abrasive diameter smaller than 30 [Symbol font/0x6D]m. However, from the same or similar field of endeavor, Sekiya teaches an abrasive of at least one of the first cutting blade and the second cutting blade has an abrasive diameter smaller than 30 [Symbol font/0x6D]m ([0020]: the particle diameter of the abrasive grains of blade 323 has a diameter of 1 to 2 [Symbol font/0x6D]m). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle diameter of the grains of Powers to reflect the diameter taught by Sekiya. Powers describes the abrasive grains as being diamonds but is silent regarding the physical structure of the grains (see [0036]). One would be motivated to do so in order to ensure the abrasive grains are the appropriate size for performing the method, and Sekiya is an answer to the silence of Powers. This modification would be recognized as using a known structure or technique, i.e. abrasive grain sizes for trimming a wafer, to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm. 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, David Posigian can be reached at 313-446-6546. 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. /MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
Read full office action

Prosecution Timeline

Dec 19, 2024
Application Filed
Sep 18, 2026
Non-Final Rejection mailed — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12751254
SYSTEM AND METHOD FOR CONTROLLING CHEMICAL MECHANICAL PLANARIZATION
5y 7m to grant Granted Sep 29, 2026
Patent 12741353
COATING REMOVAL APPARATUS AND METHOD
3y 9m to grant Granted Sep 22, 2026
Patent 12722250
POLISHING APPARATUS FOR SUBSTRATE AND POLISHING METHOD FOR SUBSTRATE USING THE SAME
3y 11m to grant Granted Sep 01, 2026
Patent 12722190
DRY CLEANING DEVICE AND DRY CLEANING METHOD
2y 1m to grant Granted Sep 01, 2026
Patent 12678914
ACOUSTIC WINDOW IN PAD POLISHING AND BACKING LAYER FOR CHEMICAL MECHANICAL POLISHING
4y 0m to grant Granted Jul 14, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
60%
Grant Probability
98%
With Interview (+38.6%)
3y 2m (~1y 5m remaining)
Median Time to Grant
Low
PTA Risk
Based on 331 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month