Prosecution Insights
Last updated: July 17, 2026
Application No. 19/093,830

PROTECTIVE LAYER FORMING METHOD AND WORKPIECE PROCESSING METHOD

Non-Final OA §102§103
Filed
Mar 28, 2025
Priority
Apr 04, 2024 — JP 2024-060716 +1 more
Examiner
BERGNER, ERIN FLANAGAN
Art Unit
Tech Center
Assignee
DISCO Corporation
OA Round
1 (Non-Final)
76%
Grant Probability
Favorable
1-2
OA Rounds
1y 3m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 76% — above average
76%
Career Allowance Rate
499 granted / 652 resolved
+16.5% vs TC avg
Strong +30% interview lift
Without
With
+30.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
36 currently pending
Career history
687
Total Applications
across all art units

Statute-Specific Performance

§101
1.2%
-38.8% vs TC avg
§103
83.6%
+43.6% vs TC avg
§102
5.6%
-34.4% vs TC avg
§112
2.9%
-37.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 652 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 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, 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura US 2016/0365270 (US’270). Regarding claim 1, US’270 teaches a protective layer forming method for forming a protective layer on a front surface of a workpiece (coating the front surface of a wafer, abstract), the method comprising the steps of: coating the front surface of the workpiece with a water-soluble resin (First, a water-soluble resin coating step of coating the front side 2a of the above-mentioned semiconductor wafer 2 with a water-soluble liquid resin to form a thin film, para, 28, see fig. 2a-c); pressing a liquid resin that cures in response to an external stimulus with a surface of the water-soluble resin coating the front surface of the workpiece and a resin film (a bond material 5 is supplied onto the thin film 300 formed on the front side 2a of the semiconductor wafer 2, and the bond material 5 is pressed by a protective plate 6 uniformly over the whole area, the bond material 5 is desirably a resin that is curable by irradiation with UV rays, the protective plate 6 is desirably a resin sheet transparent to UV rays, para. 30, see fig. 4a-b); and applying an external stimulus to the pressed liquid resin to cure the liquid resin (After the aforementioned protective plate fixing step is conducted, a bond layer curing step is carried out in which the bond layer 50 is cured by irradiation with UV rays through the protective plate 6 to which the semiconductor wafer 2 is fixed, para. 31, see fig. 5). Regarding claim 3, US’270 teaches the method of claim 1 of forming a protective layer on a front surface of a workpiece. US’270 further teaches the step of supplying the liquid resin to the surface of the water-soluble resin coating the front surface of the workpiece (as depicted in FIGS. 4A and 4B, a predetermined amount of a bond material 5 is supplied onto the thin film 300 formed on the front side 2a of the semiconductor wafer 2, he bond material 5 is pressed by a protective plate 6 uniformly over the whole area, whereby the semiconductor wafer 2 is fixed to the protective plate 6 through a bond layer 50 having a uniform thickness, as depicted in FIG. 4B, para. 30, therefore the bond material is a liquid that is pressed and cured by supplying it to the surface of the water-soluble resin). Regarding claim 4, US’270 teaches the method of claim 1 of forming a protective layer on a front surface of a workpiece. US’270 further teaches wherein the front surface of the workpiece is coated with the water-soluble resin by spin coating (a water-soluble resin coating step of coating the front side 2a of the above-mentioned semiconductor wafer 2, The resin film forming apparatus 3 depicted in FIGS. 2A and 2B includes a spinner table 31 for holding the workpiece, and a liquid resin supply nozzle 32 disposed on the upper side of a center of rotation of the spinner table 31., para. 28). Regarding claim 5, US’270 teaches the method of claim 1 of forming a protective layer on a front surface of a workpiece. US’270 further teaches the water-soluble resin coating the front surface of the workpiece has a thickness of 5 µm or less (The thickness of the thin film 300 formed on the front side 2a of the semiconductor wafer 2 by the coating is determined by the amount of the liquid resin 30 dropped, and may be approximately 1 to 3 µm, para. 28). 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. 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 is rejected under 35 U.S.C. 103 as being unpatentable over US’270 as applied to claim 1 above, and further in view of Bang et al. US 2022/0051943 (US’943). Regarding claim 2, US’270 teaches the method of claim 1 of forming a protective layer on a front surface of a workpiece. US’270 does not teach the step of laying the film on a flat table and supplying the liquid resin to the film. US’943 teaches a method of processing a wafer (para. 1). The process includes laying the film on a flat table and supplying the liquid resin to the film (as illustrated in FIG. 4, curable resin laying step S1-2 is a step for covering the resin film 22 with a curable resin 42 that can be cured by an external stimulus such as ultraviolet rays. In curable resin laying step S1-2, a protective sheet 41 that is transmissive of ultraviolet rays is placed on a flat stage 40, and a predetermined amount of curable resin 42 is put on an upper surface of the protective sheet 41, para. 55, see fig. 4). he flat reference surface 42a thus formed keeps a heightwise position 10z of the upper surface of the wafer 10 at a constant height free of height variations. as illustrated in FIG. 5, the holder 43 is lowered to cause a lower surface of the resin film 22 to spread the curable resin 42 radially outwardly over the entire lower surface of the resin film 22. The spread curable resin 42 enters gaps between the protective sheet 41 and the resin film 22, filling crevices around the protrusions of the lower surface of the resin film 22 (para. 62-68). Therefore, US’943 teaches that providing the liquid curable resin a support surface can minimize height variation and fills gaps between the protective sheet and the resin film. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of US’270 to include the step of laying the film on a flat table and supplying the liquid resin to the film because US’943 teaches that providing the liquid curable resin a support surface can minimize height variation and fills gaps between the protective sheet and the resin film and simple substitution of one known element for another to obtain predictable results is obvious, see MPEP 2141 III (B). Claim(s) 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US’270 as applied to claim 1 above, and further in view of Priewasser US 2023/0072652 (US’652). Regarding claim 6, US’270 teaches the method of claim 1 of forming a protective layer on a front surface of a workpiece. US’270 further teaches holding the film on a chuck table to expose a back surface of the workpiece and grinding the back surface of the workpiece; and peeling off the film (a back side grinding step is performed in which the protective plate 6 with the semiconductor wafer 2 fixed thereto is held on a chuck table, para. 32-33, fig. 6a-b). US’270 does not teach peeling off the cured liquid resin, and the water-soluble resin from the workpiece. US’652 teaches by providing the coating of the water-soluble material between protective film and substrate at least in the central area or portion, removal of the protective film from the substrate is significantly facilitated. In particular, the water-soluble material can lower the peeling force required for peeling off the protective film. Hence, the risk of any damage to the substrate in the process of removing the protective film therefrom is reduced even further (para. 23). Therefore, US’652 teaches that the water-soluble resin film of US’270 can be easily peeled from the surface with minimal risk of damage to the substrate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of US’270 to include peeling off the cured liquid resin, and the water-soluble resin from the workpiece. because US’652 teaches that the water-soluble resin film of US’270 can be easily peeled from the surface with minimal risk of damage to the substrate and combining prior art elements according to known methods to yield predictable results is obvious, see MPEP 2141 III (A). Regarding claim 8, the modified method of US’270 teaches the method of claim 6 of forming a protective layer on a front surface of a workpiece of claim 6. The modified method of US’270 further teaches after peeling off the film, the cured liquid resin, and the water-soluble resin from the workpiece, cleaning the front surface of the workpiece with water (US’652 teaches if residues of the water-soluble material 22 remain on the wafer 2 after protective film removal, e.g., due to the presence of the protrusions 11 on the wafer 2, such residues can be removed in a simple, reliable and efficient manner by cleaning the front side 4 with water, due to the water-soluble nature of the water-soluble material 22, para. 192). Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over US’270 in view of US’652 as applied to claim 6 above, and further in view of Inoue Yuki et al. JP 2020-170740 (JP’740) (translation provided used for citation). Regarding claim 7, The modified method of US’270 teaches the method of claim 6 of forming a protective layer on a front surface of a workpiece. US’270 does not teach after peeling off the film, the cured liquid resin, and the water-soluble resin from the workpiece, holding the back surface of the workpiece on a chuck table to expose the front surface of the workpiece and grinding the front surface of the workpiece. JP’740 teaches a method for manufacturing a laminated device chip (page 2). The method includes polishing the frond side of the wafer after a backside grinding step (page 2-4, see fig. 2-6). By such polishing, processing debris such as grinding debris, cutting debris, and debris that have adhered or fused in the previous process are removed from the first surface 2a of the first chip C1. The amount of polishing removed is, for example, in the range of 3 nm to 5 nm (page 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified method of US’270 to include after peeling off the film, the cured liquid resin, and the water-soluble resin from the workpiece, holding the back surface of the workpiece on a chuck table to expose the front surface of the workpiece and grinding the front surface of the workpiece because JP’740 teaches frond side polishing/grinding can be performed after the back grinding process of US’270 to remove debris from the manufactured chips and use of known technique to improve similar methods in the same way is obvious, see MPEP 2141 III (C). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN FLANAGAN BERGNER whose telephone number is (571)270-1133. The examiner can normally be reached M-F 8:00-5:00. 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, Joshua Allen can be reached at 571-270-3176. 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 F BERGNER/Primary Examiner, Art Unit 1713
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Prosecution Timeline

Mar 28, 2025
Application Filed
Jul 01, 2026
Non-Final Rejection mailed — §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
76%
Grant Probability
99%
With Interview (+30.4%)
2y 6m (~1y 3m remaining)
Median Time to Grant
Low
PTA Risk
Based on 652 resolved cases by this examiner. Grant probability derived from career allowance rate.

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