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
`
`16/194,547
`
`11/19/2018
`
`Atsushi HARIKAI
`
`ISHII-60091
`
`5088
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`12/12/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`TURNER BRIAN
`
`2894
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/12/2019
`
`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.
`16/194,547
`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 11/19/2018.
`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 118Is/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 11/19/2018 is/are: a). accepted or b)(j 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 11/19/2018.
`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 20191204
`
`

`

`Application/Control Number: 16/194,547
`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.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`A patent for a 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 obvious before the
`effective filing date of the claimed invention to a 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.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
`
`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
`
`summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Lei et al. (PG Pub. No. US
`
`2018/0345418 A1) in view of Ahn et al. (PG Pub. No. US 2007/0042604 A1) and lyer et al. (PG Pub. No.
`
`US 2014/0057414 A1).
`
`Regarding claim 1, Lei teaches a manufacturing process of an element chip (figs. 3-4F among
`
`others), comprising:
`
`

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`Application/Control Number: 16/194,547
`Art Unit: 2894
`
`Page 3
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`a preparing step for preparing a substrate (1] 0033 & fig. 4A: preparation of substrate
`
`404 including 406, 407 and 498) having first and second sides opposed to each other
`
`(fig. 4A: 404 has first and second opposing surfaces), and including a plurality of dicing
`
`regions (1] 0036: streets 407) and element regions defined by the dicing regions (1] 0036:
`
`element regions 406 defined by 407);
`
`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 (1] 0033 & fig. 4A: 404
`
`held by framed dicing tape 498);
`
`a protective-film forming step (fig. 3: step 302) for forming a protective film by applying
`
`a first mixture to form a coated film above the first side of the substrate (1] 0034 & fig.
`
`4A: protective film 402 formed on first side of 404 by applying a mask-forming material)
`
`to form the protective film along the element region surface (fig. 4A: 402 formed along
`
`surface of 404 comprising elements 406), the first mixture containing a first resin (1]
`
`0034: 402 comprises resin);
`
`a laser grooving step (fig. 3: step 304) for removing the protective film along the dicing
`
`regions by irradiating a laser beam onto the protective film covering the dicing regions
`
`(1] 0037: laser scribe removes 402 along 407 to form patterned mask 408) thereby to
`
`expose the first side of the substrate in the dicing regions (fig. 43: upper surface of 404
`
`exposed from 408);
`
`a dicing step (1] 0053-0054 & fig. 3: step 306) for plasma-etching the substrate from the
`
`first side through the second side along the dicing regions (1] 0053-0054: 404 plasma
`
`etched along streets 407 from first side to second side) while maintaining the protective
`
`film in the element regions (1] 0053: 404 etched through mask 408, such that 408 is
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`

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`Application/Control Number: 16/194,547
`Art Unit: 2894
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`Page 4
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`maintained in 406 regions) thereby to dice the substrate into a plurality of element
`
`chips (1] 0053 & fig. 4C: 404 singulated into individual chips); and
`
`o
`
`a removing step (1] 0060 & fig. 3: step 312) for removing the protective film in the
`
`element regions (1] 0060: at least remnants of patterned mask 408 removed) by
`
`contacting the protective film with an aqueous rinse solution (1] 0060: removal
`
`comprises an aqueous medium).
`
`Lei further teaches the protective film is formed by a spin coat process covering and protecting
`
`bumps or pillars of the element regions (1] 0034: mask is formed by uniformly spinning on a mask above
`
`a semiconductor wafer, the mask including a layer covering and protecting bumps or pillars of the
`
`integrated circuits), the protective film is soluble in water (1] 0008, 0052: 402 comprises water-soluble
`
`material).
`
`Lei is silent to each of the element region surfaces containing a plurality of convex and concave
`
`portions formed above the first side of the substrate, forming the protective film comprises drying the
`
`coated film, and the protective film mixture comprises an organic solvent having a vapor pressure higher
`
`than water.
`
`However, Lei does teach forming water-soluble protective films (1] 0055: 499, similar to 402) by
`
`spin coat (1] 0056, analogous to method of forming 402) and drying (1] 0061: low temperature bake).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the coating method of Lei to include a drying step, as a means to solidify the mask material
`
`(1] 0061). Such a solidification provides improved strength of the protective film during subsequent
`
`handling, grooving and dicing process steps.
`
`Ahn teaches forming a protective film by coating a resin mixture (similar to mixture of Lei), the
`
`mixture further comprising an organic solvent (1] 0021) having a vapor pressure higher than water (1]
`
`0022: organic solvent comprises acetone, equivalent to organic solvent disclosed in 1] 0045 of the
`
`

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`Application/Control Number: 16/194,547
`Art Unit: 2894
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`Page 5
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`instant specification). Ahn further teaches forming the protective film comprises a spin coat process (1]
`
`0021, similar to coating process of Lei) and drying the coated film (1] 0056: thermal soft bake, similar to
`
`the bake of Lei).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the coating mixture of Lei with the solvent of Ahn, as a means to control spin coat
`
`dispersion characteristics and improve film uniformity (Ahn, 1] 0021: organic solvent included in the
`
`composition provides viscosity control to allow uniform films by spin coating techniques). Furthermore,
`
`drying the coated film provides hardening and solidification for use as an etch mask (Ahn, 1] 0062).
`
`Lei in view of Ahn is silent to each of the element region surfaces containing a plurality of convex
`
`and concave portions formed above the first side of the substrate, and forming the protective film along
`
`the convex and concave portions.
`
`|yer teaches a hybrid dicing process (1] 0009: hybrid laser ablation-plasma etch singulation,
`
`similar to that of Lei) of a substrate (1] 0023: 206, analogous to 404 of Lei) comprising a plurality of
`
`element regions (1] 0023 & fig. 4A: 226, analogous to 406 of Lei) defined by dicing regions (1] 0025: 227,
`
`analogous to 407 of Lei), wherein each of the element region surfaces containing a plurality of convex
`
`and concave portions formed above the first side of the substrate (1] 0027 & fig. 3A: upper surface of
`
`element regions 226 comprise bumps 312, similar to element region bumps of Lei, resulting in convex
`
`and concave portions on 226), and a protective coating (1] 0027: 302) formed along the convex and
`
`concave portions (fig. 3A: 302 formed along Tmin/Tmax portions in region 206).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the bumps of Lei in view of Ahn and |yer with the convex/concave features of |yer, as a
`
`means to provide a plurality of metal interconnects to electrically couple the devices or transistors
`
`disposed in the element regions (|yer, 1] 0025). Furthermore, forming the protective film along the
`
`

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`Application/Control Number: 16/194,547
`Art Unit: 2894
`
`Page 6
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`convex and concave portions would provide protection of the device regions during the hybrid dicing
`
`process (|yer, 1] 0028).
`
`Since all the claimed elements were known in the prior art, and one skilled in the art could have
`
`combined the elements as claimed by known methods with no change in their respective functions, the
`
`combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc.,
`
`425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson' s-Black Rock, Inc. v. Pavement Salvage Co., 396
`
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340
`
`U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP § 2143.02.
`
`Regarding claim 2, Lei in view of Ahn and |yer teaches the manufacturing process of the element
`
`chip according to claim 1, wherein the organic solvent has a viscosity of 1.3 mPa s or less at 20 degrees C
`
`(Ahn, 1] 0022: organic solvent comprises acetone, and therefore implicitly meets the viscous property
`
`disclosed in 1] 0043 of the instant specification).
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn and |yer as
`
`applied to claim 1 above, and further in view of Takahashi et al. (PG Pub. No. US 2007/0059644 A1)
`
`Regarding claim 3, Lei in view of Ahn and |yer teaches the manufacturing process of the element
`
`chip according to claim 1, wherein the organic solvent is water-soluble (Ahn, 1] 0022: organic solvent
`
`comprises acetone, and therefore implicitly meets the soluble property disclosed in 1] 0044 of the
`
`instant specification).
`
`Lei in view of Ahn and |yer is silent to the first mixture further containing water.
`
`Takahashi teaches forming a protective-film resin coating (1] 0029 & fig. 1c: coated layer 4,
`
`similar to 402 of Lei) formed from a mixture (1] 0009: fine-pattern forming material) containing an
`
`

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`Art Unit: 2894
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`Page 7
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`organic solvent (1] 0009, 0024: organic solvent, selected from a group comprising acetone), and water (1]
`
`0009, 0023: mixed solvent includes organic solvent and water).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the first mixture of Lei in view of Ahn and |yer to further comprise water, as a means to
`
`minimize generation of defects, improving the shape of the resulting pattern (Takahashi, 1] 0019).
`
`Furthermore, it has been held to be within the general skill of a worker in the art to select a
`
`known material on the basis of its suitability for the intended use as a matter of obvious design choice.
`
`In re Leshin, 125 USPQ 416.
`
`In the instant case, a protective-film forming mixture comprising organic
`
`solvent and water is suitable for forming water-soluble coating layers, as evidenced by Takahashi.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn, |yer and
`
`Takahashi as applied to claim 3 above, and further in view of Kawamura et al. (PG Pub. No. US
`
`2016/0291464 A1).
`
`Regarding claim 4, Lei in view of Ahn, |yer and Takahashi teaches the manufacturing process of
`
`the element chip according to claim 3, comprising a first mixture (Lei, 1] 0034: mixture for forming
`
`coating layer 402, as modified by Takahishi to comprise organic solvent and water). Lei in view of Ahn,
`
`|yer and Takahashi further teaches the first mixture is disposed on integrated circuit bumps or pillars
`
`(Lei, 1] 0034 & |yer, 1] 0027), the element regions comprise metal interconnects (Lei, 1] 0036 & |yer, 1]
`
`0028), and the mixture forms a coating layer configured to protect circuit elements (Lei, 1] 0033 & |yer, 1]
`
`0028)
`
`Lei in view of Ahn, |yer and Takahashi is silent to wherein the first mixture further contains an
`
`anticorrosive agent.
`
`Kawamura teaches a resin resist composition comprising a solvent (similar to first mixture of Lei
`
`in view of Ahn and lyer), the resist composition further comprising an anticorrosive agent (1] 0003).
`
`

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`Application/Control Number: 16/194,547
`Art Unit: 2894
`
`Page 8
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`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the first mixture of Lei in view of Ahn, |yer and Takahashi to further comprise an
`
`anticorrosive agent, as a means to prevent corrosion of substrate, wiring (such as bumps/pillars of Lei
`
`and lyer), or the like. Furthermore, the adhesiveness between the resist composition and the substrate
`
`or the metal can be improved (Kawamura, 1] 0211).
`
`It has been held to be within the general skill of a worker in the art to select a known material
`
`on the basis of its suitability for the intended use as a matter of obvious design choice.
`
`In re Leshin, 125
`
`USPQ 416.
`
`In the instant case, a protective-film forming mixture comprising an anticorrosive agent is
`
`suitable for forming protective coating layers, as evidenced by Kawamura.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn and |yer as
`
`applied to claim 1 above, and further in view of Kozawa et al. (PG Pub. No. US 2008/0044769 A1).
`
`Regarding claim 5, Lei in view of Ahn and |yer teaches the manufacturing process of the element
`
`chip according to claim 1, wherein the protective-film forming step comprises a sub-step for applying
`
`the first mixture to form the coated film (Lei, 1] 0034) and a sub-step for drying the coated film (Lei, 1]
`
`0061 & Ahn, 11 0056).
`
`Lei in view of Ahn and |yer is silent to the sub-step for applying the first mixture to form the
`
`coated film and the sub-step for drying the coated film are repeated two or more times.
`
`Kozawa teaches forming a resist pattern (1] 0136: 10, analogous to 402 of Lei) including coating
`
`(figs. 1-3: 3a & 1) and baking (1] 0136: 1 is baked by heating and drying to form a coating film) sub-steps,
`
`each of the sub-steps repeated two or more times (1] 0136: coating step and the baking step are carried
`
`out plural times).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the coating and baking of Lei in view of Ahn and |yer to comprise two or more repetitions,
`
`

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`as a means to improve thickness uniformity and etch resistance of the patterned protective film
`
`(Kozawa, 11 0137-0138).
`
`Claims 6-7 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn and |yer
`
`as applied to claim 1 above, and further in view of Suzuki et al. (PG Pub. No. US 2015/0116684 A1).
`
`Regarding claim 6, Lei in view of Ahn and |yer teaches the manufacturing process of the element
`
`chip according to claim 1, wherein the protective-film forming step includes, a coating sub-step (Lei, 1]
`
`0034) for coating the first mixture to the first side of the substrate to form a first coated film (Lei, fig. 4A:
`
`402 coated on first side of 404), and a first drying sub-step (Lei, 1] 0061 & Ahn, 1] 0056) for drying the
`
`first coated film formed in the spray-coating sub- step (402 of Lei and 130 of Ahn subjected to baking).
`
`Lei in view of Ahn and |yer is silent to the coating sub-step comprising spray-coating.
`
`Suzuki teaches forming a dry-etch resist mask (1] 0109: 313, analogous to 402 of Lei) by spin
`
`coating or spray coating, and baking (1] 0109).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the coating of Lei in view of Ahn and |yer to comprise spray coating, as spray coating
`
`provides a suitable alternative to spin coating for forming dry-etch resist masks, as evidenced by Suzuki.
`
`Since all the claimed elements were known in the prior art, and one skilled in the art could have
`
`combined the elements as claimed by known methods with no change in their respective functions, the
`
`combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc.,
`
`425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson' s-Black Rock, Inc. v. Pavement Salvage Co., 396
`
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340
`
`U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP § 2143.02.
`
`

`

`Application/Control Number: 16/194,547
`Art Unit: 2894
`
`Page 10
`
`Regarding claim 7, Lei in view of Ahn, |yer and Kozawa teaches the manufacturing process of the
`
`element chip according to claim 6, wherein the protective-film forming step includes, after the first
`
`drying sub-step, a spin-coating sub-step for spin-coating a second mixture on the first coated film to
`
`form a second coated film (Kozawa, 1] 0125, 0136: 1 formed on 3 by spin coating), the second mixture
`
`containing a second resin and a second solvent (Lei, 1] 0034: resin coating matrix comprising the solvent
`
`of Ahn), and a second drying sub-step for drying the second coated film formed in the spin-coating sub-
`
`step (Kozawa, 1] 0136: baking step repeated to dry coating film 1) thereby to form the protective film
`
`containing the first resin and the second resin (Kozawa, fig. 5: protective film 10a/10b, each comprising
`
`the comprising the resin of Lei).
`
`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn and |yer as
`
`applied to claim 1 above, and further in view of Wang et al. (PG Pub. No. US 2011/0223753 A1).
`
`Regarding claim 8, Lei in view of Ahn and |yer teaches the manufacturing process of the element
`
`chip according to claim 1, comprising a protective-film forming spin coat step (Lei, fig. 3: step 302).
`
`Lei in view of Ahn and |yer is silent to wherein the protective film formed in the protective-film
`
`forming step has a thickness greater at a peripheral portion of the substrate than at an inside portion
`
`thereof.
`
`Wang teaches a process including a protective-film forming spin coat step (1] 0021: 202/204,
`
`similar to 302 of Lei), wherein the relative thickness of the protective film (1] 0022 & fig. 2: thickness of
`
`202/204 in each of first, second, and third regions) is adjusted according the relative etching rates such
`
`that a sufficient thickness remains after a subsequent etching step is complete (111] 0022-0024 & figs. 3-
`
`4: thickness of 202/204 adjusted to provide protection in each of the first, second, and third regions).
`
`Wang further teaches that the resulting thickness is influenced by the size and density of the underlying
`
`structures (1] 0022).
`
`

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`Application/Control Number: 16/194,547
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`
`Page 11
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`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to adjust the protective layer thickness of Lei in view of Ahn and |yer, as a means to provide thickness
`
`sufficient to provide etch protection for each region of the substrate, including a peripheral substrate
`
`portion and an inside substrate portion. Arriving at the claimed range of ”the protective film formed in
`
`the protective-film forming step has a thickness greater at a peripheral portion of the substrate than at
`
`an inside portion thereof” would be a matter of routine optimization, in order to provide sufficient
`
`protection for the case where the peripheral substrate region comprises a higher pattern density (Wang,
`
`1] 0023: higher pattern density regions have thicker spun-on layers and faster removal rates) relative to
`
`the inside substrate region. Such a configuration prevents undesired exposure of underlying features to
`
`the etch process.
`
`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn and |yer as
`
`applied to claim 1 above, and further in view of Fukazawa et al. (Patent No. US 5,744,402 A)
`
`Regarding claim 9, Lei in view of Ahn and |yer teaches the manufacturing process of the element
`
`chip according to claim 1, wherein the removing step includes a sub-step for partially removing the
`
`protective film (Lei, 1] 0054: mask pattern 408 at least partially removed) before contacting the
`
`protective film with the aqueous rinse solution (Lei, 1] 0060: remaining mask 402 removed in aqueous
`
`medium). Lei in view of Ahn and |yer further teaches removing residue subsequent to a laser scribe and
`
`plasma etch singulation process (Lei, 1] 0080).
`
`Lei in view of Ahn and |yer is silent to wherein the removing sub-step includes exposing a
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`surface of the protective film to a plasma atmosphere containing oxygen.
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`Fukazawa teaches a method of using a resist pattern as a dry etch mask (col. 3, lines 27-29), and
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`subsequently removing at least a portion of the resist pattern by exposing the resist pattern to a plasma
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`Application/Control Number: 16/194,547
`Art Unit: 2894
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`Page 12
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`atmosphere containing oxygen (col. 3 lines 29-30: 02 plasma ashing) before contacting the protective
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`film with the aqueous rinse solution (col. 3 lines 30-31: water rinse, similar to aqueous rinse of Lei).
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`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
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`to configure the resist removal step of Lei in view of Ahn and |yer to comprise exposing a surface of the
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`protective film to a plasma atmosphere containing oxygen, as a means to assist in removal of unwanted
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`etch products, such as the residue of Lei, formed during the plasma etch step (Fukazawa, col. 2 lines 11-
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`15).
`
`Since all the claimed elements were known in the prior art, and one skilled in the art could have
`
`combined the elements as claimed by known methods with no change in their respective functions, the
`
`combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc.,
`
`425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson' s-Black Rock, Inc. v. Pavement Salvage Co., 396
`
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340
`
`U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP § 2143.02.
`
`Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn.
`
`Regarding claim 10, Lei teaches a manufacturing process of an element chip, comprising:
`
`0
`
`a preparing step for preparing a substrate (1] 0033: preparation of substrate 404) having
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`first and second sides opposed to each other (fig. 4A: 404 has first and second opposing
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`surfaces), and including a plurality of dicing regions (1] 0036: streets 407) and element
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`regions defined by the dicing regions (1] 0036: element regions 406 defined by 407),
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`each of the element regions containing an asperity thereon (1] 0034: element regions
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`406 comprise an uneven surface due to bumps or pillars);
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`Art Unit: 2894
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`a holding step for holding the substrate and an annular frame surrounding the substrate
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`with a holding sheet adhered on the second side of the substrate (1] 0033 & fig. 4A: 404
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`held by framed dicing tape 498);
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`a protective-film forming step (fig. 3: step 302) for forming a protective film by applying
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`a first mixture to form a coated film above the first side of the substrate (1] 0034 & fig.
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`4A: protective film 402 formed on first side of 404 by applying a mask-forming material)
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`to form the protective film along the element region surface (fig. 4A: 402 formed along
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`surface of 406), the first mixture containing a first resin (1] 0034: 402 comprises resin);
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`a laser grooving step (fig. 3: step 304) for removing the protective film along the dicing
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`regions by irradiating a laser beam onto the protective film covering the dicing regions
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`(1] 0037: laser scribe removes 402 along 407 to form patterned mask 408) thereby to
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`expose the first side of the substrate in the dicing regions (fig. 43: upper surface of 404
`
`exposed from 408);
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`a dicing step (1] 0053-0054 & fig. 3: step 306) for plasma-etching the substrate from the
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`first side through the second side along the dicing regions (1] 0053-0054: 404 plasma
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`etched from first side to second side) while maintaining the protective film in the
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`element regions (1] 0053: 404 etched through mask 408) thereby to dice the substrate
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`into a plurality of element chips (1] 0053 & fig. 4C: 404 singulated into individual chips);
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`and
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`a removing step (1] 0060 & fig. 3: step 312) for removing the protective film in the
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`element regions (1] 0060: at least remnants of patterned mask 408 removed) by
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`contacting the protective film with an aqueous rinse solution (1] 0060: removal
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`comprises an aqueous medium).
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`Application/Control Number: 16/194,547
`Art Unit: 2894
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`Page 14
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`Lei further teaches the protective film is formed by a spinning process covering and protecting
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`bumps or pillars of the element regions (1] 0034: mask is formed by uniformly spinning on a mask above
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`a semiconductor wafer, the mask including a layer covering and protecting bumps or pillars of the
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`integrated circuits), the protective film is soluble in water (1] 0008, 0052: 402 comprises water-soluble
`
`material ).
`
`Lei is silent to the step of forming the protective film comprises drying the coated film, and the
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`protective film mixture comprises an organic solvent having a vapor pressure higher than water.
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`However, Lei does teach forming water-soluble protective films (1] 0055: 499) by spin coat (1]
`
`0056) and drying (1] 0061: low temperature bake).
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`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the coating method of Lei to include a drying step, as a means to solidify the mask material
`
`(1] 0061). Such a solidification provides improved strength of the protective film during subsequent
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`grooving and dicing process steps.
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`Ahn teaches forming a protective film by coating a resin mixture (similar to mixture of Lei), the
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`mixture further comprising an organic solvent (1] 0021) having a vapor pressure higher than water (1]
`
`0022: organic solvent comprises acetone, equivalent to organic solvent disclosed in 1] 0045 of the
`
`instant specification). Ahn further teaches forming the protective film comprises a spin coat process (1]
`
`0021, similar to coating process of Lei) and drying the coated film (1] 0056: thermal soft bake, similar to
`
`the bake of Lei).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention was filed
`
`to configure the coating mixture of Lei with the solvent of Ahn, as a means to control spin coat
`
`dispersion characteristics (Ahn, 1] 0021: organic solvent included in the composition provide viscosity
`
`control to allow uniform films by spin coating techniques). Furthermore, drying the coated film provides
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`hardening and solidification for use as an etch mask (Ahn, 1] 0062).
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`Application/Control Number: 16/194,547
`Art Unit: 2894
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`Page 15
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`Since all the claimed elements were known in the prior art, and one skilled in the art could have
`
`combined the elements as claimed by known methods with no change in their respective functions, the
`
`combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc.,
`
`425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson' s-Black Rock, Inc. v. Pavement Salvage Co., 396
`
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340
`
`U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP § 2143.02.
`
`Regarding claim 11, Lei in view of Ahn teaches the manufacturing process of the element chip
`
`according to claim 10, wherein the organic solvent has a viscosity of 1.3 mPa s or less at 20 degrees C
`
`(Ahn, 1] 0022: organic solvent comprises acetone, and therefore implicitly meets the viscous property
`
`disclosed in 1] 0043 of the instant specification).
`
`Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lei in view of Ahn as applied
`
`to claim 10 above, and further in view of Takahashi.
`
`Regarding claim 12, Lei in view of Ahn teaches t