www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`16/939,492
`
`07/27/2020
`
`Atsushi HARIKAI
`
`ISHII-60091USI
`
`1388
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`08’20’2020
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`TURNER BRIAN
`
`2894
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/20/2020
`
`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):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`16/939,492
`Examiner
`BRIAN TU RN ER
`
`Applicant(s)
`HARIKAI et al.
`Art Unit
`2894
`
`AIA (FITF) 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 7/27/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] 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 Expade 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)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 110Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:I The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 7/27/2020 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)C] Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`SD 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 7/27/2020.
`U.S. Patent and Trademark Office
`
`3) E] 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 20200815
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`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.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine grounded
`
`in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
`
`extension of the ”right to exclude” granted by a patent and to prevent possible harassment by multiple
`
`assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not
`
`identical, but at least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have been obvious
`
`over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
`
`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
`
`Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164
`
`USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
`
`overcome an actual or provisional rejection based on nonstatutory double patenting provided the
`
`reference application or patent either is shown to be commonly owned with the examined application,
`
`or claims an invention made as a result of activities undertaken within the scope of a joint research
`
`agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(|)(1) - 706.02(|)(3) for
`
`applications not subject to examination under the first inventor to file provisions of the AIA. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 3
`
`The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
`
`www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed
`
`determines what form (e.g., PTO/SB/ZS, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A
`
`web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal
`
`Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
`
`For more information about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
`
`Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable
`
`over corresponding claims 1-10 of U.S. Patent No. US 10,763,124 Bl. Although the claims at issue are
`
`not identical, they are not patentably distinct from each other for the following reasons.
`
`1. A manufacturing process of
`
`Claim 1: A manufacturing process
`
`an element chip, comprising:
`
`of an element chip, comprising:
`
`and concave portions formed
`
`a preparing step for preparing a
`
`a preparing step for preparing a
`
`substrate having first and
`
`substrate having first and second
`
`second sides opposed to each
`
`sides opposed to each other, and
`
`Same, with the term ”dicing”
`
`other, and including a plurality
`
`including a plurality of dicing
`
`changed to ”etching”
`
`of etching regions and element
`
`regions and element regions
`
`regions defined by the etching
`
`defined by the dicing regions,
`
`regions, each of the element
`
`each of the element regions
`
`regions containing a plurality of
`
`containing a plurality of convex
`
`convex and concave portions
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 4
`
`formed above the first side of
`
`above the first side of the
`
`the substrate;
`
`substrate;
`
`a holding step for holding the
`
`substrate and an annular frame
`
`surrounding the substrate with a
`
`holding sheet adhered on the
`
`second side of the substrate;
`
`a protective-film forming step
`
`a protective-film forming step for
`
`for forming a protective film by
`
`forming a protective film by
`
`applying a first mixture to form
`
`applying a first mixture to form a
`
`a coated film above the first
`
`coated film above the first side of
`
`side of the substrate and by
`
`the substrate and by drying the
`
`drying the coated film to form
`
`coated film to form the protective
`
`
`
`the protective film along the
`
`film along the convex and
`
`convex and concave portions,
`
`concave portions, the first
`
`the first mixture containing a
`
`mixture containing a first resin
`
`first resin which is water-
`
`which is water-soluble, water and
`
`soluble, water and an organic
`
`an organic solvent which is water-
`
`solvent which is water- soluble
`
`soluble and has a vapor pressure
`
`and has a vapor pressure higher
`
`higher than water;
`
`than water;
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 5
`
`a laser grooving step for
`
`a laser grooving step for
`
`removing the protective film
`
`removing the protective film
`
`Same, with the term ”dicing”
`
`along the etching regions by
`
`along the dicing regions by
`
`changed to ”etching”
`
`irradiating a laser beam onto
`
`irradiating a laser beam onto the
`
`the protective film covering the
`
`protective film covering the dicing
`
`etching regions thereby to
`
`regions thereby to expose the
`
`expose the first side of the
`
`first side of the substrate in the
`
`substrate in the etching regions;
`
`dicing regions;
`
`element chips” removed.
`
`a plasma-etching step for
`
`a dicing step for plasma-etching
`
`plasma-etching the substrate
`
`the substrate from the first side
`
`Same, with the term ”dicing”
`
`from the first side along the
`
`through the second side along the
`
`changed to ”plasma-etching”,
`
`etching regions while allowing
`
`dicing regions while maintaining
`
`and the limitation of ”dice the
`
`the protective film to be
`
`the protective film as a mask in
`
`substrate into a plurality of
`
`maintained as a mask in the
`
`the element regions thereby to
`
`element regions; and
`
`dice the substrate into a plurality
`
`of element chips; and
`
`a removing step for removing
`
`a removing step for removing the
`
`the protective film in the
`
`protective film in the element
`
`element regions by contacting
`
`regions by contacting the
`
`the protective film with an
`
`protective film with an aqueous
`
`aqueous rinse solution.
`
`rinse solution.
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 6
`
`2. The manufacturing process of
`
`2. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein the organic
`
`claim 1, wherein the organic
`
`solvent has a viscosity of 1.3
`
`solvent has a viscosity of 1.3 mPa
`
`mPa s or less at 20 degrees C.
`
`s or less at 20 degrees C.
`
`3. The manufacturing process of
`
`3. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein the first
`
`claim 1, wherein the first mixture
`
`mixture also contains an
`
`also contains an anticorrosive
`
`
`
`anticorrosive agent.
`
`agent.
`
`4. The manufacturing process of
`
`4. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein in the
`
`claim 1, wherein in the
`
`protective-film forming step, a
`
`protective-film forming step, a
`
`sub-step for applying the first
`
`sub-step for applying the first
`
`mixture to form the coated film
`
`mixture to form the coated film
`
`and a sub-step for drying the
`
`and a sub-step for drying the
`
`coated film are repeated two or
`
`coated film are repeated two or
`
`more times.
`
`more times.
`
`5. The manufacturing process of
`
`5. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein the protective-
`
`claim 1, wherein the protective-
`
`film forming step includes, a
`
`film forming step includes, a
`
`spray-coating sub-step for
`
`spray-coating sub-step for spray-
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 7
`
`spray-coating the first mixture
`
`coating the first mixture to the
`
`to the first side of the substrate
`
`first side of the substrate to form
`
`to form a first coated film, and a
`
`a first coated film, and a first
`
`first drying sub-step for drying
`
`drying sub-step for drying the
`
`the first coated film formed in
`
`first coated film formed in the
`
`
`
`the spray-coating sub- step.
`
`spray-coating sub- step.
`
`6. The manufacturing process of
`
`6. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 5, wherein the protective-
`
`claim 5, wherein the protective-
`
`film forming step includes, after
`
`film forming step includes, after
`
`the first drying sub-step, a spin-
`
`the first drying sub-step, a spin-
`
`coating sub-step for spin-
`
`coating sub-step for spin-coating
`
`coating a second mixture on the
`
`a second mixture on the first
`
`first coated film to form a
`
`coated film to form a second
`
`second coated film, the second
`
`coated film, the second mixture
`
`mixture containing a second
`
`containing a second resin and a
`
`resin and a second solvent, and
`
`second solvent, and a second
`
`a second drying sub-step for
`
`drying sub-step for drying the
`
`drying the second coated film
`
`second coated film formed in the
`
`formed in the spin-coating sub-
`
`spin-coating sub-step thereby to
`
`step thereby to form the
`
`form the protective film
`
`protective film containing the
`
`containing the first resin and the
`
`first resin and the second resin.
`
`second resin.
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 8
`
`7. The manufacturing process of
`
`7. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein the protective
`
`claim 1, wherein the protective
`
`film formed in the protective-
`
`film formed in the protective-film
`
`film forming step has a
`
`forming step has a thickness
`
`thickness greater at a peripheral
`
`greater at a peripheral portion of
`
`portion of the substrate than at
`
`the substrate than at an inside
`
`an inside portion thereof.
`
`portion thereof.
`
`
`
`8. The manufacturing process of
`
`8. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein the removing
`
`claim 1, wherein the removing
`
`step includes a sub-step for
`
`step includes a sub-step for
`
`partially removing the
`
`partially removing the protective
`
`protective film by exposing a
`
`film by exposing a surface of the
`
`surface of the protective film to
`
`protective film to a plasma
`
`a plasma atmosphere
`
`atmosphere containing oxygen
`
`containing oxygen before
`
`before contacting the protective
`
`contacting the protective film
`
`film with the aqueous rinse
`
`with the aqueous rinse solution.
`
`solution.
`
`9. The manufacturing process of
`
`9. The manufacturing process of
`
`the element chip according to
`
`the element chip according to
`
`claim 1, wherein the first resin
`
`claim 1, wherein the first resin
`
`comprises at least one selected
`
`comprises at least one selected
`
`from the group consisting of a
`
`from the group consisting of a
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 9
`
`water-soluble polyester and a
`
`water-soluble polyester and a
`
`water-soluble oxazole-based
`
`water-soluble oxazole-based
`
`polymer.
`
`polymer.
`
`10. A manufacturing process of
`
`10. A manufacturing process of
`
`an element chip, comprising:
`
`an element chip, comprising:
`
`changed to ”etching”
`
`a preparing step for preparing a
`
`a preparing step for preparing a
`
`substrate including a plurality of
`
`substrate including a plurality of
`
`Same, with the term ”dicing”
`
`etching regions and element
`
`dicing regions and element
`
`regions defined by the etching
`
`regions defined by the dicing
`
`regions, each of the element
`
`regions, each of the element
`
`regions containing an asperity
`
`regions containing an asperity
`
`thereon;
`
`thereon;
`
`a protective-film forming step
`
`a protective-film forming step for
`
`for forming a protective film by
`
`forming a protective film by
`
`applying a first mixture to the
`
`applying a first mixture to the
`
`substrate to form a coated film
`
`substrate to form a coated film
`
`and by drying the coated film to
`
`and by drying the coated film to
`
`form the protective film, the
`
`form the protective film, the first
`
`first mixture containing a first
`
`mixture containing a first resin
`
`resin which is water-soluble,
`
`which is water-soluble, water and
`
`water and an organic solvent
`
`an organic solvent which is water-
`
`which is water-soluble and has a
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 10
`
`vapor pressure higher than
`
`soluble and has a vapor pressure
`
`water;
`
`higher than water;
`
`a laser grooving step for
`
`a laser grooving step for
`
`removing the protective film
`
`removing the protective film
`
`Same, with the term ”dicing”
`
`along the etching regions by
`
`along the etching regions by
`
`changed to ”etching”
`
`irradiating a laser beam onto
`
`irradiating a laser beam onto the
`
`the protective film along the
`
`protective film along the etching
`
`etching regions thereby to
`
`regions thereby to expose the
`
`expose the substrate;
`
`substrate;
`
`a plasma-etching step for
`
`a dicing step for plasma-etching
`
`Same, with the terms ”dicing”
`
`plasma-etching the substrate
`
`the substrate with the protective
`
`changed to ”plasma-etching”
`
`with the protective film used as
`
`film used as a mask to dice the
`
`and ”etching”, and broadened
`
`a mask along the etching
`
`substrate into a plurality of
`
`to remove the dicing
`
`regions; and
`
`element chips; and
`
`requirement.
`
`a removing step for removing
`
`a removing step for removing the
`
`the protective film with an
`
`protective film with an aqueous
`
`aqueous rinse solution.
`
`rinse solution.
`
`Claim 1 of the instant application differs from claim 1 of the patent by substituting the term
`
`”etching” in place of the term ”dicing”, and removing the limitation of dicing the substrate into a
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 11
`
`plurality of chips. Line 17 of the patent discloses that the plasma etching step performs the dicing
`
`function. Therefore, the dicing regions of the patent are also implicitly etching regions.
`
`Claim 1 of the instant application is broader in scope, since it does not include the requirement
`
`for plasma etching in a manner to separate the substrate into a plurality of chips as required by claim 1
`
`of the patent. However, all limitations of the application are either explicitly or implicitly taught by the
`
`patent.
`
`Claim 10 of the application similarly corresponds to claim 10 of the patent, with all limitations
`
`disclosed for the same reasons as claim 1.
`
`Claims 2-8 of the application correspond to claims 2-8 of the patent.
`
`Allowable Subject Matter
`
`Claims 1-10 would be allowable if rewritten or amended to overcome the non-statutory double
`
`patenting rejection(s) set forth in this Office action.
`
`The following is a statement of reasons for the indication of allowable subject matter:
`
`Seddon et al. (US 2011/0175225 A1) teaches a plasma etching step for plasma-etching a
`
`substrate from a first side along etching regions while allowing a protective film to be maintained as a
`
`mask in element regions (1] 0038 & fig. 5: substrate 19 etched in regions 29 while maintaining mask 32 in
`
`active element regions). However, Seddon is silent to laser grooving the protective film in the etching
`
`regions, or the protective film formed from a mixture containing a first resin which is water-soluble,
`
`water and an organic solvent which is water- soluble and has a vapor pressure higher than water.
`
`

`

`Application/Control Number: 16/939,492
`Art Unit: 2894
`
`Page 12
`
`Lei et al. (PG Pub. No. US 2018/0345418 A1) teaches a method comprising plasma-etching a
`
`substrate along etching regions (1H) 0053-0054: 404 plasma etched along streets 407) while maintaining
`
`a protective film in element regions (1] 0053: 404 etched through mask 408, such that 408 is maintained
`
`in element 406 regions).
`
`Ahn et al. (PG Pub. No. US 2007/0042604 A1) teaches spin coating a protective resin film
`
`mixture, the mixture further comprising an organic solvent (1] 0021).
`
`|yer et al. (PG Pub. No. US 2014/0057414 A1) teaches a method of plasma-etching a substrate,
`
`the substrate comprising element region surfaces containing a plurality of convex and concave portions
`
`formed above the first side of the substrate (110027 & fig. 3A: upper surface of element regions 226
`
`comprise bumps 312, resulting in convex and concave portions on 226).
`
`Takahashi et al. (PG Pub. No. US 2007/0059644 A1) teaches a protective-film resin coating
`
`formed over a resist pattern. In Takahashi, the protective-film resin coating is formed over the already-
`
`formed resist pattern 3.
`
`However, Takahashi is silent as to water contained in the coating liquid for forming the pattern
`
`3. A person skilled in the art, reading Takahashi, would not have thought of using a coating liquid
`
`containing water to form the coated layer 4 over the resist pattern 3, separately from the resist pattern
`
`of Seddon, Lei, Ahn and/or |yer. Note that, however, the resist pattern is not the coated layer. Even in
`
`view of Takahashi, a skilled person could not have conceived of further containing water in the coating
`
`liquid used for forming the resist pattern of Seddon, Lei, Ahn and |yer.
`
`In light of these limitations in the claims (see Applicant’s figs. 5A-SB & 111] 0036-0037 among
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`others), the previously applied references do not anticipate or obviate the claimed method as in the
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`context of the claims.
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`

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`Application/Control Number: 16/939,492
`Art Unit: 2894
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`Page 13
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`Conclusion
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`Application/Control Number: 16/939,492
`Art Unit: 2894
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`Page 14
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`/BR|AN TURNER/
`Examiner, Art Unit 2894
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`