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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/426,076
`
`05/30/2019
`
`Hidehiko KARASAKI
`
`ISHII-60991
`
`1140
`
`meremt
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST OTH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`WOLDEGEORGIS, ERMIAS T
`
`2893
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/27/2021
`
`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):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-7 and 9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 1-7and9 is/are rejected.
`OO Claim(s)__is/are objectedto.
`C) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible 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.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() 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:
`c)X None ofthe:
`b)L) Some**
`a) All
`1.4] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date _____
`Other: A.NE: PTO2323
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210121A
`
`Application No.
`Applicant(s)
`16/426,076
`KARASAK| et al.
`
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`
`ERMIAS TWOLDEGEORGIS_|2893 Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 12/28/2020.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)l¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`2.
`
`Response to Amendment
`
`Claim 8 has been cancelled; claim 1 has been amended; and claims 1-7 and 9 are
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`currently pending.
`
`3.
`
`Priority
`
`Acknowledgment is made of applicant's claim for foreign priority under 35
`
`U.S.C. 119(a)-(d).
`
`4.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore the effective
`filing date of the claimed invention toa 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.
`
`5. Claims 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over LEI et ak
`
`fU%s 2012/0322233 Al, he remafter “LEO3 in view of Takanashi et al GUS
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 3
`
`2006/0103344 Al, hereinafter “Takanashv’} and Morishige etal (OS 2008076233
`
`Ad, hereinafter “Moris hige”)
`
`In regards to claim 1, LEE a method for manufacturmg an clement chip, comprising:
`
`a preparation step of preparing a substrate, (see, forexample, Pig. 44) the
`
`substrate (406) having a first surface and a second surface apposite to the first surface, and
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`mcludine a plurality of clement regions (425, 426, Pie. 4A} anddividing regions (427, Fig. 4A}
`
`defnmg the clement regions (425, 426), the substrate (441) being held on a boklng sheet (489)
`
`arn the second surface side;
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`aprotective fini (402) formation step of applying a mixture containing a water-
`
`sohible resin anda solvent (See, forexample, Pars [0033] and [0034)) tothe first surface of the
`
`substrate, to form a protective film contammeg the water-soluble resiy
`
`a laser grooving step ol uradiaing (See, forexample, Pig. 4B). with laser heht.
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`portions of the protective film (402) that cover the dividing regions (427), to remove the portions
`
`covering the dividing regions, and expose the first surface of the substrate in the diveling regions
`
`(27),
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`adicmg step (See, forexample, Fig. 4C) of dicing the substrate into a plurality of
`
`element chips by plasma etching (See, forexample, Par [)030) the substrate fromthe first
`
`surface in the second surface m the dividing regions m a state in which the clement regions are
`
`coveredby the protective film (see, Fig, €C) asa mask for shioldme the substraic from plasraa;
`
`aremoval step of rernoving the portions of the protective Tkm that coverthe
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`clement regions (See, for example, Fig. 4D and Par [0053)); and
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 4
`
`the protective film has a thickness of greater than Sum (See, Pars [0038] and
`
`[036
`
`Lil fais toexpkediy teach that wherein the water-soluble resin has a meling
`
`oft
`of 250°C or more,
`or
`a
`decomposition
`ternperature of 450°C or more, ar
`soko of 250°C or more, or a decormpesition teraperature of 450°C or more, and
`
`the protective film has an absorption coefficient of 1 absL/gcm’! or more fora
`
`wavelength of the laser light.
`
`Takanashi while disclosmg protective film agent teaches that ihe protective film has an
`
`absorplion cocfhicient of 1 absL/gcnr! or more for a wavelength of the laser ight (in the
`
`protective film agent of the present Invention, itis preferred that (1) the g abserplien
`
`coe Hiclent k, for laser light with a wavelength of 335m, of the solids of the solution be
`
`within the range of 3K10~ to 2.Sk10" abs L/e....See for example, Pars [0014] and [0015]
`
`therefore, by dividing this absorption coefficient by the thickness ofthe protective film as taught
`
`by Takanashi, the priorarf teaches the Rnuiation).
`
`‘Therefore, i woukl have been obvious to one having ordinary skill
`
`in the art at the time
`
`the invention was made to modify LEE by Takanashi because this would help faciltates the
`
`removal of the protective filmatthe laser grooving step.
`
`LEI as modified by Pakanashi further fails to explicitly teach that the water-soluble rosin
`
`has amelime pomt of 250°C or more, or adecommposition fermperature of 450°C or more.
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 5
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`Morismee while disclosing a laser processing method teaches the water-soluble resin has
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`atmoltng point of 250°C or more, or a decomposition temperature of 450°C or more
`
`{.. protective film has heat resistance (e.g. 400 degree.C}... see Par [O053)}.
`
`Therefore, i would have been obvious to one having ordinary skill
`
`in the art at the time
`
`the wivention was made have a lnigher meling point because this would help prevent the clement
`
`regions from being affected by the laser grooving process when hot debris are being generated.
`
`LEI fails to explicitly teach the water-soluble resin is sclected from the group consisting
`
`of a water-soluble polyester, polystyrene sulfonic acid, an oxazo-based water-soluble polymer,
`
`and salts thereot.
`
`itis well known in the art to use polyester resin and solvent mixture for the purpose of
`
`creating a thermosetting anti-reflective coating cormposition as taught by LISPN 6042990 (See,
`
`for example, clan 1).
`
`Therefore, @ would have been obvious to one having ordinary ski in the art at the time
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`the mvention was made to select water soluble polyester hecause it is well known in the art to
`
`use pobyester resin and selvent muxture for the pnrpose of create a thermosctting anti-reflective
`
`coating composition as taught by USPN 6042990 Gee, for example, claim 1). Furthermore,
`
`it
`
`has been held to be within the general skill of a worker in the art to select a known material on
`
`the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin,
`
`125 USPQ 416.
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 6
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`In regards to claims 2 and 3. LED as modified ahove teaches all limtations of claim1 bit
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`fais to oxphc#ly teach that the water-soluble resi absorbs the laser ight m the laser grooving
`
`stop: and the mixture further contains a photosensitizer that absorbs the laser light.
`
`Takanashi while disclosing aprotective film agent teaches the water-soluble resin
`
`absorbs the laser ight in the laser grooving stop (see, for example, Par [G013)): and the mixture
`
`further contams a photosensitizer that absorbs the laser light (See, for example, Pars (6013),
`
`[G0461, and {00477}.
`
`Therefore, t would have been obvions to one having ordinary skill
`
`in the art at the ime
`
`the invention was made to modify LEP by Takanashi because this would help facilitates the
`
`removal of the protective film atthe laser groovmg step.
`
`in regards to clanm 4, LET discloses (Figs. 4A-4D) the substrate mclides an electrode (See, for
`
`example, 512 mm Wig. 3} on the first surface. and the mixture has a pH less than 7 (Nee, for
`
`example, Par [G053]}.
`
`However, LET fais to caplicith teach that the PH fails between 5 and 8.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to have the PH values fall between 5 and 8, since it has been held that where
`
`the general conditions of a claim are disclosed in the prior art, discovering the optimum or
`
`workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
`
`In regards to claim 5, LED discloses (Figs. 44-41) that the wavelength of the laser light
`
`is 250
`
`nm or more and 360 omor less (See, for example, Par [0046]).
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 7
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`in regards to claim 6, LEI discloses (Pigs. 44-41) in the removal step, the protective filmi
`
`is
`
`removed by boing brought into contact with an aqueous liquid cleaner (see, fer example, Par
`
`[BGS 3).
`
`in regards to claim 9, LEP as modified above discloses the water-soluble resin has a melimg
`
`point of 250°C or more (See, for example, Morishige, Par {0053]}....since the protective film
`
`100 has heatresistance (e.g., 400.degree. C.) as mentioned above, there is no possibility that
`
`the protective film 100 may be melted by the heat of the debris 150 sticking to the protective
`
`film 100, thereby preventing the direct deposition of the debris 150 to the devices 102.
`
`According to Morishige,
`
`the physical property, heat resistance, is directly related to the
`
`melting point of the protective film. It is apparently clear that the protective film can withstand a
`
`heating temperature of about 400°C without affecting the physical properties of the protective
`
`film and the protective film of Morishige has a melting point of greater than 250°C).
`
`6. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over LEI m view of
`
`Takanashi, Morishige and Shoa as apphed ta clair | above, and further m view of
`
`Kitahara et al (US 201G/0129346 Al, here mafter “Kitahara”}
`
`In regards to clam 7, LET as modified above discloses all irnitations of claim | but fails to
`
`explicitly teach that the mixture has a viscosity of 100 mPa-s or jess at 20°C.
`
`Katahara while disclosing a protective film teaches that the mixture has a viscosity of 100
`
`mPa-s or less at 20°C (See, forexample, Pars [G010),O41], 0043 }).
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 8
`
`Therefore, it would have been obvious to one having ordinary skill
`
`in the art at the time
`
`the invention was made to incorporate the concept of the method of Kitahara into LEI because
`
`the affinity of the liquid resin to the work surface of the wafer in the spin coating step is
`
`improved, and the protective film is uniformly formed on the work surface of the wafer, thus
`
`improving the rate of contribution of the liquid resin to the protective film to reduce the amount
`
`of usage of the liquid resin.
`
`7.
`
`Response to Arguments
`
`Applicant’s arguments with respect to claim 1 have been considered but are moot
`
`because the new ground of rejection does not rely on any reference applied in the prior rejection
`
`of record for any teaching or matter specifically challenged in the argument.
`
`8.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. 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
`
`MONTHSfrom the mailing date of this action.
`
`In the event a first reply is filed within TWO
`
`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
`
`the end of the THREE-MONTHshortenedstatutory period, then the shortened statutory period
`
`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
`
`In no event,
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 9
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`however, will the statutory period for reply expire later than SIX MONTHSfrom the mailing
`
`date of this final action.
`
`9,
`
`Correspondence
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone numberis
`
`(571)270-5350. The examiner cannormally be reached on Monday-Friday 8 am-5 pm E.S.T..
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Parker Ken can be reached on 57127219072298. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
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`
`/ERMIAS T WOLDEGEORGIS/
`Primary Examiner, Art Unit 2893
`
`