www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/427,380
`
`02/08/2017
`
`BUNZI MIZUNO
`
`PIPMM-57200
`
`4267
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`”’06ng
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`CULBERT, CHRISTOPHER A
`
`2815
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/06/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/427,380
`Examiner
`CHRISTOPHERACULBERT
`
`Applicant(s)
`MIZUNO et al.
`Art Unit
`2815
`
`AIA Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 22 October 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s) g is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) l is/are rejected.
`
`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 02/08/2017 is/are: a). accepted or b)C] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)|:] Some”
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.|:] Certified copies of the priority documents have been received in Application No.
`
`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181126
`
`

`

`Application/Control Number: 15/427,380
`Art Unit: 2815
`
`Page 2
`
`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.
`
`Election/Restrictions
`
`Applicant’s election without traverse of Claim 1 in the reply filed on 10/22/2018 is
`
`acknowledged.
`
`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 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tischler (US
`
`2013/0328172 A1) in view of Cronin et al. (US 5,854,141).
`
`Tischler discloses a method for manufacturing an element chip, comprising:
`
`a step of preparing a substrate (Fig. 2A) which has a first main surface (top surface in Fig. 2A)
`
`and a second main surface (bottom surface in Fig. 2A) and includes a first layer (10) that is a
`
`semiconductor layer (1] 0038), a second layer (40) including an insulating film (1] 0038) formed on a side
`
`of the first main surface of the first layer (see Fig. 2A), a plurality of element regions (corresponding to
`
`20), and a dividing region (region between areas corresponding to 20) for defining each of the element
`
`regions;
`
`a laser dicing step (Fig. 3; 1] 0045) of dividing the substrate to a plurality of element chips
`
`including the element regions by irradiating the dividing region with laser light from the side of the first
`
`

`

`Application/Control Number: 15/427,380
`Art Unit: 2815
`
`Page 3
`
`main surface, in a state where the second main surface is supported by a supporting member (310) and
`
`forming a damaged region (sidewalls of 20) on an end surface of each of the element chips.
`
`Tischler does not disclose a protection film stacking step. However, Tischler discloses forming
`
`the element chips from organic material (1] 0008). Further, forming protection films on the sides of
`
`organic chips is well-known in the art (protection film 44 in Fig. 9 of Cronin et al.). Cronin discloses that
`
`having such a protection film is advantageous for organic elements which comprise multiple layers as it
`
`reduces the probability of delamination (Col. 4, Lines 7-9). It would have been obvious to one having
`
`ordinary skill in the art to use a protection film as disclosed by Cronin et al. for the device produced by
`
`the method of Tischler in order to reduce the probability of delamination.
`
`To form such a protection film, Cronin et al. disclose performing a protection film stacking step
`
`of stacking a protection film on the top and side surfaces of the element chips (protection film 16 is
`
`formed on the top and sides surfaces of the chips in Fig. 7; these surfaces would correspond to on the
`
`first main surface and the end surfaces of each of the element chips in the method of Tischler). To form
`
`the protection film on the side surfaces, the protection film stacking step would occur after the laser
`
`dicing step as the side surfaces were revealed in that step. Cronin et al. further disclose a protection film
`
`etching step (see transition from Fig. 7 to Fig. 8) of removing the protection film stacked on the top
`
`surface (corresponding to the first main surface of Tischler) by etching the protection film anisotropically
`
`by exposing each of the element chips to plasma (RIE in Col. 3, Lines 57-59), after the protection film
`
`stacking step and remaining the protection film for covering the side surfaces (corresponding to the
`
`damaged regions of Tischler).
`
`Conclusion
`
`

`

`Application/Control Number: 15/427,380
`Art Unit: 2815
`
`Page 4
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CHRISTOPHER A CULBERT whose telephone number is (571)272-4893. The
`
`examiner can normally be reached on Monday-Friday, 8-5.
`
`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,
`
`Kenneth Parker can be reached on 571-272-2298. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`through Private PAIR only. For more information about the PAIR system, see http://pair-
`
`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
`
`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
`
`CANADA) or 571-272-1000.
`
`/C.A.C/
`Examiner, Art Unit 2815
`
`/TUCKER J WRIGHT/
`
`Primary Examiner, Art Unit 2891
`
`