www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
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`16/154,930
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`10/09/2018
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`ShOgO OKITA
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`ISHII-59884
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`4441
`
`759°
`52°“
`PEARNE & GORDON LLP
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`”W”
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`”30 DUY VU NGUYEN
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`1713
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/1 1/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
`
`Application No.
`16/154,930
`Examiner
`DUY vu N DEC
`
`Applicant(s)
`OKITA et al.
`Art Unit
`1713
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`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).
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`Status
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`1)I Responsive to communication(s) filed on 10/9/18.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`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.
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`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.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`
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`Claim(s) E is/are allowed.
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`Claim(s) 1 and 4—6 is/are rejected.
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`Claim(s) a is/are objected to.
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`) ) ) )
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`)
`are subject to restriction and/or election requirement
`[j Claim(s
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.”smogovmatentszinit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
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`Application Papers
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`10)D The specification is objected to by the Examiner.
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`11)I The drawing(s) filed on 10/9/18 is/are: a)I 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).
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`Priority under 35 U.S.C. § 119
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`12)I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.I Certified copies of the priority documents have been received.
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`2D Certified copies of the priority documents have been received in Application No.
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`3B 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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20191206
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`

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`Application/Control Number: 16/154,930
`Art Unit: 1713
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis 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,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
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`4.
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`Claim(s) 1, 4, 5, 6 is/are rejected under 35 U.S.C. 102a1 as being anticipated by
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`Miyanari (US 2014/0109941).
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`With respect to claim 1, Miyanari describes a method comprising: providing a
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`carrier having a supporting film or dicing tape and a frame part or dicing frame at the
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`peripheral of the dicing tape; adhering a substrate on the inner region of the dicing tape
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`and inside of the peripheral region of the frame wherein the dicing tape sags in the inner
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`region (paragraphs 10, 12) (please also see Kim cited below, in paragraph 52, to show
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`that the dicing tape is inherently sagged also due to the weight of the substrate); setting
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`

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`Application/Control Number: 16/154,930
`Art Unit: 1713
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`Page 3
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`the carrier on a stage of a chamber wherein the substrate is sucked by the first sucking
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`section 11, a first region, which is on a lower surface of the dicing tape and then dicing
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`frame is sealed by the second sucking section 12 (paragraph 104), this would provide
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`claimed contacting the holding sheet or dicing tape on the stage so that the dicing tape
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`in the inner region touches the stage before the dicing tape in the peripheral region
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`does since the sagged inner region of the dicing tape would touch or sucked to the
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`staged first by the sucking section 11 ; plasma cleaning the substrate (paragraph 96).
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`With respect to claim 4, the sagging of the dicing tape would inherently result in
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`stretching of the dicing tape.
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`With respect to claim 5, the dicing tape is made from resin film such as pvc,
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`polyolefin or polypropylene, therefore, they would be stretched by any steps that applies
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`heat to the substrate such as the plasma cleaning step above.
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`5.
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`Claim(s) 6 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the
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`alternative, under 35 U.S.C. 103 as obvious over Miyanari.
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`With respect to claim 6, since the substrate is going through many steps and
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`each step has its own processing parameters (paragraph 107), the chamber including
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`the stage and the substrate would have to be cooled down to a room temperature in
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`order to prepare the substrate and the chamber for the subsequent step.
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`In alternative,
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`it would have been obvious for one skill in the art before the effective filing date of the
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`invention to cool the chamber including the substrate holder/stage and the substrate to
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`a room temperature in order to prepare the chamber and the substrate for the next step.
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`

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`Application/Control Number: 16/154,930
`Art Unit: 1713
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`Page 4
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`Allowable Subject Matter
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`6.
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`Claims 2, 3 are objected to as being dependent upon a rejected base claim, but
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`would be allowable if rewritten in independent form including all of the limitations of the
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`base claim and any intervening claims.
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`With respect to claim 2, the applied prior art above doesn’t suggest a sag amount
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`Q of the holding sheet/ dicing tape in the inner region is controlled to be greater than a
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`distortion amount R of the frame in the sagging step.
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`With respect to claim 3, the applied prior art above doesn’t suggest wherein the
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`itoitiing sheet in the inner region is saggeri in the preparing step by appiying the frame
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`with a biasing tense in a radiai direction tor stretching it, adhering the frame on the
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`hoiciing sheet in the peripherai region thereof, and reieasing the biasing force from the
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`irarne.
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`Ciaiins 7'19 are aiioweci because the appiietzi prior an: above doesn’t describe the
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`steps oi: preparing a conveying carrier inoiociing a hoisting sheet and an annoiar trarne
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`provided on a peripherai region of the hoiding sheet, by apptying the frame with a
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`biasing force in a rediai direction fer stretching it, adhering the frame en the hoio’ing
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`sheet in the peripheral region thereof, end reieasing the hiasing force from the frame, so
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`as to sag the hoitiing sheet in an inner region inside the peripheral region; adhering the
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`substrate on the holding sheet in the inner region to hoioi the eohetrate on the oenveyihg
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`carrier: setting the conveying carrier on e siege provided within a piasma proeessing
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`apparatus to oohteot the hoittihg sheet on the stage so that the hetttihg sheet in the
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`

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`Application/Control Number: 16/154,930
`Art Unit: 1713
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`Page 5
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`inner region touches the stage before the holding sheet in the peripherai region does;
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`and plasma processing the substrate.
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to BUY VU NGUYEN DEO whose telephone number is
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`(571)272-1462. The examiner can normally be reached on 9-5 M-F.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Nadine Norton can be reached on 571-272—1465. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`

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`Application/Control Number: 16/154,930
`Art Unit: 1713
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`Page 6
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/DUY VU N DEO/
`
`Primary Examiner, Art Unit 1713
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`12/6/1 Q
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`