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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
`
`16/881,165
`
`05/22/2020
`
`Hidefumi SAEKI
`
`ISHI-62703
`
`1013
`
`me
`
`3RI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND, OH 44114-3108
`
`ELMARHOUMI, NADER M
`
`2826
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/11/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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*
`1-6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-6 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) 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://Awww.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) The drawing(s) filed on 05/22/2020 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)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220629
`
`Application No.
`Applicant(s)
`16/881,165
`SAEKl etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NADER M ELMARHOUMI
`2826
`Yes
`
`
`
`-- The MAILING DATEof this 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 05/22/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 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)\0) 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: 16/881,165
`Art Unit: 2826
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The presentapplication, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Specification
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`The title of the invention is not descriptive. A new title is required that is clearly indicative of
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`the invention to which the claims are directed.
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`The followingtitle is suggested: Element Chip Isolation Method Using Laser Grooving and
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`Plasma Etching
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`A patentfor a claimed invention may not be obtained, notwithstanding that the claimed
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`invention is not identically disclosed as set forth in section 102, if the differences between the claimed
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`invention and the prior art are such that the claimed invention as a whole would have been obvious
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`before the effective filing date of the claimed invention to a person having ordinaryskill in the art to
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`which the claimed invention pertains. Patentability shall not be negated by the manner in which the
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`invention was made.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`

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`Application/Control Number: 16/881,165
`Art Unit: 2826
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`Page 3
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`4. Considering objective evidence present in the application indicating obviousness or non-
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`obviousness.
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`Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tabuchi et al, US
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`2018/0308755 A1 (hereinafter Tabuchi) in view of Sekiya et al, US 2019/0206734 A1 (hereinafter
`
`Sekiya).
`
`Regarding Claim 1, Tabuchi teaches (Figs. 1A — 5C except Fig. 2B) An element chip
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`manufacturing method comprising: a preparation step of preparing a substrate (Fig. 1A-1B) including a
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`plurality of element regions (15) and a dicing region (13) defining the element regions (15), the substrate
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`(11) having a first surface (11a) and a second surface (11b) opposite the first surface (11a); an attaching
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`step (Fig. 3A-3B) of attaching the substrate (11) via a die attach film (19) to a holding sheet (21) secured
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`ona frame (23), with the die attachfilm (19) facing the second surface (11b); a protective film formation
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`step (Figs. 1A-1B) of forming a protective film (17) that covers the first surface (11a) of the substrate (11)
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`attached to the holding sheet (21); a laser grooving step (Fig. 2A) of irradiating a laser beam (2a) to the
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`protective film (17) along the dicing region (13), to form an opening (11c) in the protective film (17), so
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`that the substrate (11) in the dicing region (13) is exposed from the opening (11c); a first etching step
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`(Fig. 5A) of exposing the substrate (11) to a first plasma ([0024]) to etch the substrate (11) exposed from
`
`the opening (11c), so that a plurality of element chips (25) are formed from the substrate (11) and so
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`that the die attach film (19) is exposed from the opening (11c becoming kerf 11d); a second etching step
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`(Fig. 5B) of exposing the substrate (11) to a second plasma ([0046]) to etch the die attach film (19)
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`exposed from the opening (11c becoming kerf 11d), so that the die attach film (19) is split so as to
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`correspond to the elementchips ([0048]); and a pickup step (Fig. 5C & [0049]) of detaching the element
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`chips (25) from the holding sheet (21), together with the split die attach film (19); wherein the die attach
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`film (19) used in the attaching step (Fig. 3A-3B) is larger (Fig. 1A & [0030]) than the substrate (11).
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`

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`Application/Control Number: 16/881,165
`Art Unit: 2826
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`Page 4
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`While Tabuchi teachesa laser grooving step (Fig. 2A), it is silent on the laser grooving step
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`including a first irradiation step of irradiating the laser beam to the die attach film protruding from the
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`substrate.
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`However, in analogous art, Sekiya teaches ([0051] teaches a laser processing apparatus that
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`applies a laser beam to the die-attach film 33 to divide the die-attach film 33 along the projected dicing
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`lines 13) a laser grooving step that includesan irradiation step (Fig. 8) of irradiating a laser beam (108a)
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`to the die attach film (33) protruding (33 is protruding along the projected dicing lines 13) from the
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`substrate (Sekiya, Fig. 8: 11).
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`It would have been obvious for a person of ordinaryskill in the art at the time of filing to modify
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`Tabuchi’s laser grooving step with Sekiya’s teaching of directly laser dicing the die attach film of Tabuchi
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`19 whichis larger than/protruding from Tabuchi’s substrate 11 in order to moreeasily isolate the
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`element chips 25 from the die attach film 19 and the holding sheet 21.
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`Should the Applicant choose to specify a particular sequence regarding the steps of Claim lina
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`future amendment, the Examiner notes that Tabuchi ([0031]) teaches that while the wafer supporting
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`step (whichis Applicant’s attaching step) is performed after performing the passivation film removing
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`step (which is Applicant’s laser grooving step) in this preferred embodiment, the wafer supporting step
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`may be performed before performing the passivation film removing step.
`
`Regarding Claim 2, Tabuchi as modified by Sekiya teach The element chip manufacturing
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`method ofclaim 1.
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`Tabuchi as modified by Sekiya doesn’t explicitly teach wherein in the first irradiation step, the
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`laser beam is irradiated along a first path, the first path starting at a point on the die attach film
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`protruding from the substrate, passing over across the substrate in the dicing region, and ending at
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`anotherpoint on the die attach film protruding from the substrate.
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`

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`Application/Control Number: 16/881,165
`Art Unit: 2826
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`Page 5
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`However, the laser beam pass/path stated is a standard dicing process where the laser beam
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`starts on one side of the die, over the edge of the die attach film, and goes acrossa line above the
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`substrate to the other side of the substrate. Therefore, it would’ve been obvious for a person of
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`ordinaryskill in the art to use a standard dicing process in Tabuchi as modified by Sekiya so that the die
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`attach film is firstly diced where it extends/protrudes from the substrate, hence, allowing an easier
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`separation from the holding sheet.
`
`Regarding Claim 3, Tabuchi as modified by Sekiya teach The element chip manufacturing
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`method of claim 2 (please refer to the obviousness statement above).
`
`Tabuchi as modified by Sekiya doesn’t explicitly teach wherein the laser grooving step further
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`includes a second irradiation step ofirradiating the laser beam along a second path, the second path
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`starting at a point on an edge of the substrate, passing over the dicing region, and ending at another
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`point on the edge of the substrate, and an irradiation locus on the dicing region along the second path
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`agrees with an irradiation locus on the dicing region along the first path.
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`However, it would’ve been obvious for a person of ordinaryskill in the art to incorporate second
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`laser pass/path from one side to another on the edgesof the substrate (left to right scribe line) that
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`traces the first pass/path (same locus) in order to cut through the remaining depth of the substrate.
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`Regarding Claim 4, Tabuchi as modified by Sekiya teach The element chip manufacturing
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`method of claim 2 (please refer to the obviousness statement abovefor claim 2).
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`Tabuchi as modified by Sekiya doesn’t explicitly teach wherein in the laser beam scanned along
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`the first path, a powerdensity of the laser beam irradiated to the die attach film protruding from the
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`substrate is smaller than a power density of the laser beam irradiated to the substrate in the dicing
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`region.
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`However, it would’ve been obvious for a person of ordinaryskill in the art to incorporate more
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`power in the laser beam cutting through entire depth of the substrate in comparison with the laser
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`

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`Application/Control Number: 16/881,165
`Art Unit: 2826
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`Page 6
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`power beam usedto only cut through the die attach film, in order to use adequate laser powerto
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`properly cut through each of those regions. See MPEP 2143, Rationale D.
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`Regarding Claim 5, Tabuchi as modified by Sekiya teach The element chip manufacturing
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`method of claim 4 (please refer to the obviousness statement abovefor claim 4).
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`Tabuchi as modified by Sekiya doesn’t teach wherein an output power of the laser beam
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`scanned along the first path is set constant, and a focal point of the laser beam scanned alongthe first
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`pathis on the first surface of the substrate in the dicing region, rather than on the die attach film
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`protruding from the substrate.
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`However, it would’ve been obvious for a person of ordinaryskill in the art to use obvious power
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`and focus (focal point) modifications based on what the beam is cutting through, thickness, material,
`
`etc. See MPEP 2143, rational D: “Applying a known technique to a known device (method, or product)
`
`ready for improvementto yield predictable results”.
`
`Regarding Claim 6, Tabuchi as modified by Sekiya teach The element chip manufacturing
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`method of claim 1, wherein in the pickup step (Fig. 5C & [0049]), the holding sheet (21) is expanded
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`([0049]) to widen a gap (27) between the element chips, and then the elementchips (25) are detached
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`from the holding sheet (21) ([0049]).
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
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`on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
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`application for patent published or deemed published under section 122(b), in which the patent or
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`

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`Application/Control Number: 16/881,165
`Art Unit: 2826
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`Page 7
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`application, as the case may be, names anotherinventor and was effectively filed before the effective
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`filing date of the claimed invention.
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`Claims 1 & 6 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Okita et al, US
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`2019/0221479 A1 (hereinafter Okita).
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`The applied reference has a common assignee and joint inventor with the instant application.
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`Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C.
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`102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR
`
`1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the
`
`inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.
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`102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C.
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`102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C.
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`102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the
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`subject matter disclosed in the reference and the claimed invention were either owned by the same
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`person or subject to an obligation of assignment to the same person or subject to a joint research
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`agreement.
`
`RegardingClaim 1, Okita teaches (Figs. 1 —- 13) An element chip manufacturing method
`
`comprising: a preparation step (Fig. 1) of preparing a substrate (10) including a plurality of element
`
`regions (R1) and a dicing region (R2) defining the element regions (R1), the substrate (10) having a first
`
`surface (10X) and a second surface (10Y) opposite the first surface (10X); an attaching step (Fig. 3) of
`
`attaching the substrate (10) via a die attach film (30) to a holding sheet (22) secured on a frame (21),
`
`with the die attach film (30) facing the second surface (10Y); a protective film formation step (Fig. 4) of
`
`forming a protective film (40) that covers the first surface (10X) of the substrate (10) attached to the
`
`holding sheet (22); a laser grooving step (Fig. 5 & [0052]) of irradiating a laser beam ([0052]) to the
`
`protective film (40) along the dicing region (R2), to form an opening (S) in the protective film (40), so
`
`

`

`Application/Control Number: 16/881,165
`Art Unit: 2826
`
`Page 8
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`that the substrate (10) in the dicing region (R2) is exposed (Fig. 5) from the opening (S); a first etching
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`step (Fig. 11) of exposing the substrate (10) to a first plasma ([0066]) to etch the substrate (10) exposed
`
`from the opening (S), so that a plurality of element chips (200) are formed from the substrate (10) and
`
`so that the die attach film (30) is exposed from the opening (S); a second etching step (Fig. 12) of
`
`exposing the substrate (10) to a second plasma ([0080]) to etch the die attach film (30) exposed from
`
`the opening(S), so that the die attach film (30) is split (Fig. 12) so as to correspond to the elementchips
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`(200); and a pickup step (Fig. 13) of detaching the element chips (200) from the holding sheet (22),
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`together with the split die attach film (30); wherein the die attach film (30) used in the attaching step
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`(Fig. 3) is larger (30a) than the substrate (10), and the laser grooving step (Fig. 5) includesa first
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`irradiation step (Fig. 8) of irradiating the laser beam ([0054] teaches that the grooves S may be formed
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`within the first covering portion 40a and the protective film 40 in the second covering portion 405, and
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`on the DAF 30in the first region 30a as shownin FIG. 8) to the die attach film protruding (30a) from the
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`substrate (10).
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`Regarding Claim 6, Okita teaches The element chip manufacturing method of claim 1, wherein
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`in the pickup step (Fig. 13), the holding sheet (22) is expanded to widen a gap between the element
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`chips ([0088] teaches that the non-adhesive side 22b of the holding sheet is pushed upon in order to
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`raise the element chips 200 in order to easily pick up the element chips away from the holding sheet.
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`This act of pushing up 22b of 22 would cause the expansion of 22 as well as widening the gap between
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`the element chips when an elementchip 200is in that raised-up state), and then the element chips
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`(200) are detached from the holding sheet (22).
`
`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to NADER M ELMARHOUMI whosetelephone numberis (571)272-3557. The
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`examiner can normally be reached M-Th 8am-6pm.
`
`

`

`Application/Control Number: 16/881,165
`Art Unit: 2826
`
`Page 9
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`
`Davienne Monbleau can be reached on 571-272-1945. The fax phone numberfor the organization
`
`wherethis application or proceeding is assigned is 571-273-8300.
`
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`
`/NADER M ELMARHOUMI/
`Examiner, Art Unit 2826
`
`/DAVIENNE N MONBLEAU/
`Supervisory Patent Examiner, Art Unit 2826
`
`