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 § 112
Claim 4 recites the limitation "...is imaged by the imaging unit..." in line 3. There is insufficient antecedent basis for this limitation in the claim.
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)(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.
Claim(s) 1, 4 and 5 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yamamoto et al. (US PUB 2009/0085594), hereinafter Yamamoto.
With respect to claim 1, Yamamoto discloses a wafer inspection apparatus (See the system shown in figure 2 of Yamamoto) comprising: a probe card (See [6A] in paragraph [0057] of Yamamoto) provided on a head stage (See [201] in paragraph [0057] of Yamamoto); a chuck (See [4A] in paragraph [0057] of Yamamoto) holding a wafer (See [W] in figure 2 of Yamamoto) and being able to electrically connect the wafer to the probe card (See paragraphs [0068] and [0069] of Yamamoto); a holding portion provided below the head stage and holding the chuck (See [26] in paragraph [0067] of Yamamoto); a target provided on the chuck (See [44] in paragraph [0071] of Yamamoto); and an imaging unit imaging the target (See paragraph [0071] of Yamamoto), wherein the target is formed to be larger than an allowable movement range of the chuck with respect to the holding portion to be able to be imaged by the imaging unit with the imaging unit fixed at a predetermined position (See paragraph [0071] in view of figure 6 of Yamamoto), and a position and angle of the chuck are determined on the basis of the target imaged by the imaging unit (See paragraph [0101] in view of paragraph [0102] of Yamamoto).
With respect to claim 4, Yamamoto discloses a chuck position measurement (See paragraph [0057] of Yamamoto) method, which is a chuck position measurement method in which a chuck is held by a holding portion (See [26] in paragraph [0067] of Yamamoto), and a target provided on the chuck (See [44] in paragraph [0071] of Yamamoto) is imaged by the imaging unit (See paragraph [0071] in view of figure 6 of Yamamoto), the chuck position measurement method comprising: imaging the target, which is formed to be larger than an allowable movement range of the chuck with respect to the holding portion (See paragraph [0071] in view of figure 6 of Yamamoto), in a single shot with the imaging unit fixed at a predetermined position (See paragraph [0071] in view of figure 6 of Yamamoto); and determining a position and an angle of the chuck on the basis of the target imaged by the imaging unit (See paragraph [0101] in view of paragraph [0102] of Yamamoto).
With respect to claim 5, Yamamoto discloses a target (See [44] in paragraph [0071] of Yamamoto), which is a target imaged by an imaging unit (See paragraph [0071] in view of figure 6 of Yamamoto) to determine a position and an angle of a chuck held by a holding portion (See paragraph [0101] in view of paragraph [0102] of Yamamoto), with the chuck held by the holding portion (See paragraph [0071] in view of figure 6 of Yamamoto), formed to be larger than an allowable movement range of the chuck with respect to the holding portion to be able to be imaged by the imaging unit with the imaging unit fixed at a predetermined position (See paragraph [0071] in view of figure 6 of Yamamoto), and having a plurality of marks whose disposition and shape are set to be able to measure a position and an angle of the chuck (See paragraph [0104] of Yamamoto).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto as applied to claim 1 above, and further in view of Yamada et al. (JP2006173503A), hereinafter Yamada.
With respect to claim 2, Yamamoto discloses the wafer inspection apparatus according to claim 1, but fails to disclose wherein the target is provided on an imaged portion formed of a sheet material which is a separate member from the chuck, and has a plurality of marks having holes with diameters of 0.3 to 7 mm at a pitch of 1 mm. However, Yamada does disclose wherein the target is provided on an imaged portion formed of a sheet material which is a separate member from the chuck (See paragraph [0045] of Yamada), and has a plurality of marks having holes with diameters of 0.3 to 7 mm (See paragraph [0048] of Yamada) at a pitch of 1 mm (See paragraph [0062] of Yamada). The spatial dimensions disclosed by Yamada don’t exactly encompass the ranges recited in the claim; however,
MPEP 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.”. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device disclosed by Yamamoto to include the features disclosed by Yamada because doing so enables enhanced position translation resolution and accuracy.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Yamamoto and Yamada, as applied to claim 2 above, and further in view of Norman et al. (US PUB 2010/0263709), hereinafter Norman.
With respect to claim 3, the combination of Yamamoto and Yamada discloses the wafer inspection apparatus according to claim 2, wherein the imaged portion has an ensured reflectance on an imaged surface on a side opposite to the imaged surface (See paragraph [0074] of Yamamoto) but fails to disclose that said reflectance is provided with a black Mylar sheet. However, Norman does disclose a Mylar sheet (See paragraph [0998] of Mylar). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device disclosed by the combination of Yamamoto and Yamada to include the feature disclosed by Norman because doing so enables enhanced position translation resolution and accuracy.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEMILADE S RHODES-VIVOUR whose telephone number is (571)270-5814. The examiner can normally be reached M-F (flex schedule).
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/TEMILADE S RHODES-VIVOUR/ Examiner, Art Unit 2858
/RAUL J RIOS RUSSO/ Examiner, Art Unit 2858
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