Prosecution Insights
Last updated: October 25, 2026
Application No. 19/090,854

SUBSTRATE PROCESSING METHOD, METHOD OF MANUFACTURING SEMICONDUCTOR DEVICE, PROCESSING APPARATUS AND NON-TRANSITORY COMPUTER-READABLE RECORDING MEDIUM

Final Rejection §102§103
Filed
Mar 26, 2025
Priority
Mar 27, 2024 — JP 2024-051213
Examiner
SAAD, ERIN BARRY
Art Unit
1735
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Kokusai Electric Corporation
OA Round
2 (Final)
72%
Grant Probability
Favorable
3-4
OA Rounds
11m
Est. Remaining
84%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allowance Rate
933 granted / 1288 resolved
+7.4% vs TC avg
Moderate +11% lift
Without
With
+11.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
43 currently pending
Career history
1339
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
45.6%
+5.6% vs TC avg
§102
19.7%
-20.3% vs TC avg
§112
27.3%
-12.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1288 resolved cases

Office Action

§102 §103
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 . Claim Rejections - 35 USC § 102 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, 5-7, 11-18 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Lee et al. (KR20110034057A from IDS). Regarding claim 1, Lee discloses a substrate processing method comprising: (a) forming a first microbump 42 on a first surface of a substrate 40, wherein the first surface faces a semiconductor chip when the substrate and the semiconductor chip are bonded together; (b) forming a second microbump 12 on a second surface of the semiconductor chip 10, wherein the second surface faces the substrate when the substrate and the semiconductor chip are bonded together (figure 4 and see description); (c) forming an insulating film 22 on a first exposed surface of the first surface where an underfill material is to be filled, a second exposed surface of the second surface where the underfill material is to be filled, the first microbump and the second microbump (figure 6 and see figure 6 description); (d) removing the insulating film formed on a connection surface of the first microbump and a connection surface of the second microbump (figures 5-7, see description of figures 5-7); and (e) bonding the connection surface of the first microbump on the first surface and the connection surface of the second microbump on the second surface in a state where the first exposed surface and the second exposed surface are provided (figures 4-7, description of drawings, claims, Lee discloses that removing the insulating film from the substrate and the chip are by the same process). Regarding claim 5, Lee discloses in (d), the insulating film formed on the connection surface of the first microbump and the connection surface of the second microbump is removed by a CMP (Chemical Mechanical Polishing) process or an etching process (see description of figure 7). Regarding claim 6, Lee discloses further comprising (g) forming an underfill film 32 between the substrate and the semiconductor chip after (e) (figure 4). Regarding claim 7, Lee discloses that the insulating film is capable of being formed on: another insulating film on the first surface or the second surface; a metal film on the first surface or the second surface; the first microbump: and the second microbump (figure 4, see description). There is a second film 22 on the second surface. The claim only requires that the film is capable and is not actually required. Since a film is placed on both surfaces and contacts the microbumps and the conductive resin 32, the claim limitation is met. Regarding claim 11, Lee discloses, in (c), the insulating film is formed on the first surface, the second surface, the first microbump and the second microbump by performing a cycle at least once, and wherein the cycle comprises: (c-1) forming an insulating layer on the first surface, the second surface, the first microbump and the second microbump by supplying a source gas to the first surface, the second surface, the first microbump and the second microbump; and (c-2) exposing the insulating layer to a reducing atmosphere. Lee discloses that the insulating material can be coated by spin coating, vacuum deposition (sputtering and chemical vapor deposition), spray coating (see description of figures 5-7). Regarding claim 12, since Lee discloses applying a similar insulating film as the current invention with a similar process, it is the Examiner’s position that the insulating film is formed to prevent a difference in a wettability between the second surface of the semiconductor chip and a surface of the second microbump, or between the first surface of the substrate and a surface of the first microbump. Regarding claim 13, Lee discloses wherein (g) is performed in a state where the insulating film is exposed on the substrate (figure 4, and see description). Regarding claim 14, Lee discloses wherein (g) is performed in a state where the insulating film is formed on the substrate (figure 4, see description). Regarding claim 15, Lee discloses that the insulating film comprises an inorganic insulating film (see description of figures 5-7). Regarding claim 16, Lee discloses a substrate processing method comprising: performing at least one among:(a) providing a substrate 40 to be bonded with a semiconductor chip 10 in a state where the substrate 40 is provided with a first exposed surface where an underfill material is to be filled, the substrate comprising, a first surface facing the semiconductor chip to be bonded therewith, the first exposed surface provided at the first surface, and a first microbump 42 formed on the first surface; and forming an insulating film 22 on the first exposed surface (figures 3-4, 5-7 and description of drawings). Regarding claim 17, Lee discloses in (a) or (b), the insulating film is formed on the first exposed surface and the first microbump, or on the second surface and the second microbump by performing a cycle at least once, and wherein the cycle comprises: (c-1) forming an insulating layer on the first exposed surface and the first microbump by supplying a source gas to the first exposed surface and the first microbump, or on the second exposed surface and the second microbump by supplying the source gas to the second exposed surface and the second microbump; and (c-2) exposing the insulating layer to a reducing atmosphere. Lee discloses that the insulating material can be coated by spin coating, vacuum deposition (sputtering and chemical vapor deposition), spray coating (see description of figures 5-7). Regarding claim 18, Lee method of manufacturing a semiconductor device, comprising: the method of claim 16 (figures 3-4, 5-7 and description of drawings, see rejection of claim 16 above). 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. Claim(s) 2 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20110034057A from IDS) as applied to claims 1, 16 above. Regarding claim 2, Lee discloses that the thickness can be a few microns, but does not disclose a thickness of the insulating film is set to be 50 nm or less. However, based on the current specification, the thickness claimed is only an example. There is no criticality for 50 nm. This appears to be a design choice. With that being said, since it is known to have a insulating layer on the substrate, it would have been obvious to one skilled in the art at the time of the invention to determine the ideal thickness required for protecting the substrate during its use. Regarding claim 20, Lee discloses the method of claim 16, but does not specifically disclose using a non-transitory computer-readable recording medium storing a program that causes a processing apparatus, by a computer. However, to one skilled in the art at the time of the invention it would have been obvious to use a program to perform the known process due to the size and complexity of the components. This would remove any human error during the bonding process. Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20110034057A from IDS) as applied to claim 1 above and further in view of Honda (JP55166943A). Regarding claim 3, Lee does not specifically disclose (f) forming a conductive film 4 on the insulating film between (c) and (d). However, Honda discloses putting a conductive film on an insulating layer 3 prior to removing the insulating layer. To one skilled in the art at the time of the invention it would have been obvious to place a conductive film on the substrate in order to shield the substrate from radiation during use (see English translation of abstract). Regarding claim 4, Honda discloses (d), the conductive film and the insulating film formed on the connection surface of the first microbump and the connection surface of the second microbump are removed (see English translation of abstract). Allowable Subject Matter Claims 8-10 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. Prior art was not found wherein (c) comprises: (c-1) forming a first insulating film on the first surface, the first microbump, the second surface and the second microbump; and (c-2) forming a second insulating film on the first insulating film, wherein the second insulating film comprises an organic group-containing insulating film. Response to Arguments Applicant's arguments filed 8/20/2026 have been fully considered but they are not persuasive. The Applicant argues that the amended claim 1 states that at least the surfaces on which the underfill material is to be filled are covered with the insulating film 16, it is possible to uniformly supply the underfill material. Therefore, it is possible to prevent the differences in the wettability between the surfaces of the substrate 10, the semiconductor chip 12 and the microbumps 14, and suppress an occurrence of the void when filling the underfill material. The Applicant argues that this is described in paragraphs 0011-0016 of the current specification. The Applicant argues that Lee does not teach each and every feature of amended claim 1. The Applicant argues that objective of Lee is to prevent a short circuit from happening. Lee describes bonding the pad part and the connection part in a state where adhesive resin is present around the periphery of the bumps, there are no exposed surface into which an underfill material could be embedded. The Examiner disagrees. The claim does not specifically state what the “exposed” surfaces are being exposed to. They can be exposed to anything, including the resin. The resin is interpreted as being an underfill. The claim as written meets the claim limitation. Furthermore, the arguments with respect to the specification and the technical aspects of the invention are not commensurate in scope with the claimed invention. The Applicant argues Lee describes bonding the pad part and the connection part in a state where adhesive resin is present around the periphery of the bumps. The Applicant argues that because the adhesive is present around the periphery of the bumps, there is no exposed surface into which an underfill material could be embedded. The Applicant argues that based on the effects lee is attempting to achieve, one of ordinary skill in the art would have no motivation to amend Lee to reach these features. The Examiner disagrees. The claim does not specify what the surfaces are exposed to. They could be exposed to anything, including the underfill. The resin is considered an underfill. The claims do not state when the underfill is filled. The claim also does not define the underfill. The first exposed surface and the second exposed surface are exposed to the resin. While Lee has different effects from the current invention, the claims are still met by Lee as currently written. The Examiner suggests amending the claims to further clarify the exposed surfaces and the underfill. The Applicant argues that Honda is silent to the above mentioned features. The Examiner disagrees for the reasons stated above. 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 ERIN B SAAD whose telephone number is (571)270-3634. The examiner can normally be reached Monday-Thursday 7:30a-6p. 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, Keith Walker can be reached at 571-272-3458. 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. /ERIN B SAAD/Primary Examiner, Art Unit 1735
Read full office action

Prosecution Timeline

Mar 26, 2025
Application Filed
May 20, 2026
Non-Final Rejection mailed — §102, §103
Aug 20, 2026
Response Filed
Oct 16, 2026
Final Rejection mailed — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12766631
FRICTION STIR WELDING METHOD
2y 2m to grant Granted Oct 20, 2026
Patent 12759094
BOND HEAD HEATER INCORPORATING FLUID CHAMBER FOR COOLING
2y 5m to grant Granted Oct 13, 2026
Patent 12746616
SOLID-STATE JOINING METHOD, SOLID-STATE JOINED JOINT, SOLID-STATE JOINED STRUCTURE, AND SOLID-STATE JOINING DEVICE
2y 8m to grant Granted Sep 29, 2026
Patent 12734603
DISSIMILAR MATERIAL SOLID PHASE BONDING METHOD, AND DISSIMILAR MATERIAL SOLID PHASE BONDED STRUCTURE
4y 7m to grant Granted Sep 15, 2026
Patent 12734601
WIRE BONDING SYSTEMS, WIRE REPLACEMENT SYSTEMS, AND RELATED METHODS
1y 10m to grant Granted Sep 15, 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

3-4
Expected OA Rounds
72%
Grant Probability
84%
With Interview (+11.4%)
2y 6m (~11m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 1288 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