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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
`
`ronson
`
`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
`
`10/13/2020
`
`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*
`1-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 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.
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`) ) ) )
`
`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
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20201007
`
`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 6/30/2020.
`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
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`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 1 has been amended; claims 8-9 have been newly added; and claims 1-9 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 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over LEI et
`
`al. (US 2012/0322233 Al, heremafter “LEO"} in view of Takanashi ci al (US
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 3
`
`2006/0 105344 Al, hereimafier “Takanashv’} and Morshige etal CUS Z2008/0076233
`
`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 oppasite 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)
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`on the second surface side;
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`aprotective fini (402) formation step of applying a mixture containing a water-
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`sohible resin anda solvent (See, forexample, Pars [0033] and [0034)) tothe first surface of the
`
`substrate, to form a protective film contammg the water-soluble resi,
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`alaser groovmg stepol wradiaing (See, forexample, Fig. 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 divaline 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;
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`aremoval step of rernoving the portions of the protective Tkm that coverthe
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`clement regions Usee, for example, Pie, 4D and Par [O053)): and
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`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 4
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`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
`
`point of 250°C or more, or a decomposition temperature 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.
`
`Takanasm while disclesme protective film agent teaches that the protective film
`
`has an absorption coefficient of | absL/gcny' 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 333m, of the solids ofthe sehution he
`
`within the range of 3K10~ to 2.Sk10" abs L/e....See for example, Pars [0014] and [6015]
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`therefore, by dividing this absorption coefficient by the thickness ofthe protective
`
`film as taught by Takanashi, the prior art teachesthe linutation}.
`
`Therefore, # would have been obvious fo one having ordinary ski in the art at the time the
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`invention was made tomodhfy LEPby Takanashi because this would help facilitates the removal
`
`of the protective Ohm atthe laser grooving step.
`
`LEP as modified by Takanashi further fails to explicitly teach that the water-
`
`soluble resin has ameling point of 250°C or more, or a decomposition temperature of 450°C or
`
`more.
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 5
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`Morishige while disclosmg alaser processing method teaches the water-soluble
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`resin has arneling pomt of 250°C or more, or a decamposiion temperature of 450°C or more
`
`{.. protective filmhas heat resistance (e.g. 400 degree.C}... see Par [0G33)}.
`
`Therefore, it would have been obvious to one havimg ordinary skill
`
`in the art at the
`
`ume the invention was roade have a bigher meltmg pomt because this would help prevent the
`
`element regions from being affected by the laser grooving process when hot debris are bemg
`
`generated.
`
`in regards to cisims 2 and 3, LET as modified above teaches all Bnutations of clann 1 but
`
`fais to oxplicaly teach that the water-soluble resin absorbs the laser light
`
`im the laser grooving
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`step; and the muxhure further contains a photosensitver that absorbs the laser light.
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`Takanasii while disclosmg aprotective film agent teaches the water-soluble resin
`
`absorbs the laser ight in the laser grooving step Gsee, for example, Par [G003)): and the mixture
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`further contains a photosensiter that absorbs the laser light (See, for example, Pars [(O083),
`
`0046], and 00477).
`
`Therefore, &@ woukl have becn obvious to one having ordinary skill
`
`in the art at the time
`
`the invention was made to modify LEP by Takanashi because this would help facthtates the
`
`removal of the protective filmatthe laser grooving step.
`
`in regards to claun 4, LEI discloses (Figs. 44-4D) the substrate includes an clectrode (See, for
`
`example, 512 ba Pig, 3} on the first surface. and the ouxture has a pH less than 7 Gee, for
`
`example, Par [G083)).
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 6
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`However, LET fails to exphcitly teach that the PH falls between 5 and 8.
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to have the PH values fall between 5 and 8, since it has been held that where
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`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 35, LET disclases (Pigs. 44-40) that the wavelength of the laser light
`
`is 250
`
`nm or more and 360 omor less (See, for example, Par [0046]).
`
`in regards to claim 6, LET disclases (Pigs. 44-4103) in the removal step, the protective film is
`
`removed by being brought mio contact wih an aqueous liquid cleaner (See, for example, Par
`
`(O03 3).
`
`in regards to clam &, LET as modified above teaches all imitations of claim 1 except that the
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`water-soluble resin ws selected from the group consishing of a water-soluble polyester,
`
`polystyrene sulfonic ackl, an oxavol-based water-sohkible polymer, and salts thereof.
`
`itis well known in the art that water soluble polyesier or polystyrene sulfonic acai for the
`
`purpose of creating etch selectivity becauseit has been held to be within the general skill of a
`
`workerin the art to select a known material on the basis ofits suitability for the intended use as a
`
`matter of obvious design choice. In re Leshin, 125 USPQ 416.
`
`In regards to claim 9 LEPas modified above discloses the water-sohible resin has a meluing
`
`point of 250°C or more thee, for example, Morishige, Par J0053f....since the protective film
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 7
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`100 has heatresistance (e.g., 400.degree. C.) as mentioned above, there is no possibility that
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`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).
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`6. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over LEI in view of
`
`Takanashi and Morishige as appliod fo claim 1 above, and further in view of Kitahara ct
`
`al (is 2010/01 29346 Al, hereinalier “Kitahara”}
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`In regards to clanm 7, LEDas modified above discloses all linutations of claim 1 but fails to
`
`explicitly teach that the mixture has a viscosity of 100 mPa-s or Jess at 20°CO.
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`Kitahara while disclosing a protective film teaches that the mpture hasa viscosity of LOG
`
`mPa-5 or less at 20°C (See, for example, Pars [0010], [0047], [G043h.
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`Therefore, it would have been obvious to one having ordinary skill
`
`in the art at the time
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`the invention was made to incorporate the concept of the method of Kitahara into LEI because
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`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
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`improving the rate of contribution of the liquid resin to the protective film to reduce the amount
`
`of usage of the liquid resin.
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 8
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`7.
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`Response to Arguments
`
`Applicant's arguments filed on 06/30/2020 have been fully considered but they are not
`
`persuasive.
`
`Applicant makes the folowing arguments:
`
`1. “Although LEI discloses m [O032} and [0033] the thickness of the protective fikn
`
`Gmask layer 402) of less than 30 um, and advaniageously less than 20 pm, the paragraph [0054]
`
`af Fakanashi discloses that “[tfhe recommendable thickness of the protective film (the dry
`
`tlickness of the protective film agent) is usually of the order of 0.1 to S um on the streets." Thus,
`
`there is so motivation fora person skiled in the artto combine LET with Takanashi.” (Remarks
`
`pp.
`
`5S and &
`
`‘This is not persuasive becaase one cannot show non-obviousness by attacking references
`
`individually where the rejections are based on combination of references. See In re Keller, 642
`
`F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck &Co., 800 F.2d 1091, 231 USPQ 375 (Fed.
`
`Cir. 1986). It should be noted that the rejection of claim 1 is not based on anticipation, butrather,
`
`is based on obviousness. In this case,examiner relies on the combined teachings of LEI,
`
`Takanashi and Morishige. Takanashi is not relied on for teaching of the protective film’s
`
`absorption coefficient. Besides, Takanashi teaches the recommendable thickness of the
`
`protective film on the streets. It doesn’t discourage thickness of the protective film thicker than
`
`the recommended range except “unnecessarily large” thickness. Therefore, the prima-facie case
`
`of obviousness is deemed to be proper.
`
`

`

`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 9
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`2.*.. the heat resistance of 400 degree C disclosed in Morishige is outside of the range
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`of the decomposition temperature of 450°Cor more which is required by the amended clan
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`1. Also, Morishige is silent that the water-scluble resin has ameling pomt of 250°C or more.”
`
`CRemarks page 6}
`
`This #8 not persuasive because Morshige imPar [O053] reads:
`
`““-.since the protective film 100 has heat resistance (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.”
`
`The physical property of 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.
`
`Therefore, the prima-facie case of obviousness is deemedto be proper.
`
`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 10
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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 5712722298. 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
`
`