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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
`
`16/263,382
`
`01/31/2019
`
`Yoshiro KITAMURA
`
`WASHM-60469
`
`7649
`
`eres
`
`aR
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`EVERHART, CARIDAD
`
`2895
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/17/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-6 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 1/31/2019 is/are:
`a)W) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a) All
`1.4] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20201214
`
`Application No.
`Applicant(s)
`16/263,382
`KITAMURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CARIDAD EVERHART
`2895
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C) Responsive to communication(s) filed on
`CJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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\() 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: 16/263,382
`Art Unit: 2895
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`Inthe event the determination of the status of the application as subject to AIA35 U.S.C. 102
`
`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis for the rejection will not be considered a new ground ofrejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
`
`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 fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 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 ofthe claimed invention to a person having ordinaryskillin the art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the manner in which the invention
`was made.
`
`The factual inquiries 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.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 3
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`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumes that the subject matter of the various claims was commonly owned as of the
`
`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
`
`of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
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`to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
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`against the later invention.
`
`Claims 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (US
`
`2017/0025275A1)(“Hirata”) in view of Vanagasetal (US 2017/0250113 A1).
`
`Hirata discloses a methodforslicing a wafer rather than grinding a wafer (para. 0008) anda
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`slicing apparatus (Fig. 1 and para. 0032)
`
`Including a heating section that melts a modified layer of a workpiece , as Hirata discloses laser
`
`head 36 (Fig. 1 and Fig. 2 and para. 0034) and the pulse width can be adjusted (para. 0035)
`
`By heating the modified layer , as the modified layer is formed by the laser focal point which is
`
`scanned (para. 0046-0048)
`
`The recitation “the workpieces being formedby a collection of a laser beam”is not described in
`
`the specification in sufficient detail to give an understanding of a definition , therefore the broadest
`
`reasonable interpretation is given the plain meaning, “a collection of material” (Merriam-Webster’s
`
`Collegiate Dictionary, 1982). Hirata is considered to satisfy the limitation “formed by a collection of a
`
`laser beam”, as Hirata discloses the modified layer , which is a collection of materialas defined by the
`
`dictionary cited above, is formed by the laser beam.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 4
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`And a separation section that separates the workpiece at the melted modified layer as a
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`boundary, as Hirata discloses the workpiece which is held on the chuck table 26 and a pressing member
`
`58 exerts astress which separates the wafer from the modified layers 43 (para. 0062).
`
`Hirata does not explicitly state formed by a collection of a laser beam.
`
`The recitation “the workpieces being formed by a collection of a laser beam”is not described in
`
`the specification in sufficient detail to give an understanding of a definition , therefore the broadest
`
`reasonable interpretation is given the plain meaning, “a collection of material”
`
`|”
`
`(Merriam-Webster’s
`
`Collegiate Dictionary, 1982). Hirata is considered to satisfy the limitation “formed by a collection of a
`
`laser beam”, as Hirata discloses the modified layer , which is a collection of material as defined by the
`
`dictionary cited above, is formed by the laser beam.
`
`a separating step of separating the workpiece , as Hirata discloses the workpiece which is held
`
`on the chuck table 26 and a pressing member 58 exertsa stress which separates the wafer from the
`
`modified layers 43 (para. 0062) and the modified layer is a boundary at which separation occurs (para
`
`0062).
`
`Hirata does not explicitly state with respect to the recited limitations with respectto melting
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`and ata temperature less than a melting point of the workpiece and
`
`Equal to or more than a melting point of the modified layer.
`
`Vanagas, in the samefield of endeavor of producing modified layer in silicon and silicon carbide
`
`wafers(para. 0028) discloses that the forming of a modified layer by femtosecond laser (para. 0039)
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`produces melting of the modified area (para. 0014).
`
`It would have been obvious to one of ordinary skill in the art before the effective filing date of
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`the claimed invention that the methoddisclosed by Hirata includes the forming of melting in the
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`modified layer in view of the disclosure made by Vanagas, as Vanagas discloses that benefit is that the
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page5S
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`laser beam passes through material that is not desired to be damaged andis focused on theline of
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`cleaving (para. 0013).
`
`Reclaim 2: Hirata discloses the modified layer has a larger surface roughness than the
`
`unmodified surface (para. 0063).
`
`Reclaim 3: Hirata discloses the wafer is separated in a direction parallel to a scanning direction
`
`of the laser beam,as Hirata discloses the wafer is separated by a motion parallel to the direction of the
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`surface of the wafer (para. 0062), and the scanning direction of the laser is also in a direction parallel to
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`the surface of the wafer (para. 0044 andFig. 8).
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`Reclaim 5: The combination of Hirata and Vanagas discloses the laser beam has a wavelength
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`with a transmittance of 50% or more with respect to the workpiece, as Vanagas discloses the pulsed
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`laser for which the wafer is transparent but absorbs wherethe laser is focused is used (para. 0007), and
`
`Hirata discloses that the majority of the wafer is not modified (Fig. 10). The reasons for combining the
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`references are the same as stated above in the refection of claim 1.
`
`Claims 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (US
`
`2017/0025275A1)(“Hirata”) in view of Vanagasetal (US 2017/0250113 A1)(“Vanagas”) as applied to
`
`claim 1 above, and further in view of Sakamoto et al (US 2007/0290299 A1)(“Sakamoto”).
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`Hirata in view of Vanagas discloses the limitations of claim 1 as stated above. Hirata in view of
`
`Vanagasis silent with respect to the recited range of pulse width.
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`Sakamoto, in the same field of endeavorof laser processing a substrate to form a modified layer
`
`(para. 0002) discloses that a prefereable pulse width of 1 ps (picosecond) (para. 0106), which is within
`
`the recited range, therefore the recited range is anticipated (MPEP 2131.03), or , in the alternative,is
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`obvious (MPEP 2144.05(1)).
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 6
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`It would have been obvious to one of ordinary skill in the art before the effective filing date of
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`the claimed invention to have combined the pulse width disclosed by Sakamoto with the method
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`disclosed by Hirata in view of Vanagasin order to obtain the benefit of not converting the energy to
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`thermal energyas disclosed by Sakamoto (para. 0106).
`
`Reclaim 5: The combination of Hirata and Vanagas and Sakamoto discloses the laser beam has
`
`a wavelength with a transmittance of 50% or more with respect to the workpiece, as Vanagas discloses
`
`the pulsed laser for which the wafer is transparent but absorbs wherethelaser is focused is used (para.
`
`0007), and Hirata discloses that the majority of the wafer is not modified (Fig. 10). The reasons for
`
`combining the references are the same as stated abovein the rejection of claim 1.
`
`Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (US
`
`2017/0025275 A1)(“Hirata”).
`
`Hirata discloses a slicing apparatus (Fig. 1 and para. 0032)
`
`Including a heating section that melts a modified layer of a workpiece , as Hirata discloses laser
`
`head 36 (Fig. 1 and Fig. 2 and para. 0034)
`
`By heating the modified layer at a temperature less than a melting point of the workpiece and
`
`Equal to or more than a melting point of the modified layer
`
`The recitation “the workpieces being formed by a collection of alaser beam”is not described in
`
`the specification in sufficient detail to give an understanding of a definition , therefore the broadest
`
`reasonable interpretation is given the plain meaning, “a collection of material” (Merriam-Webster’s
`
`Collegiate Dictionary, 1982). Hirata is considered to satisfy the limitation “formedby a collection of a
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 7
`
`laser beam”, as Hirata discloses the modified layer , which is a collection of material as defined by the
`
`dictionary cited above, is formed by the laser beam.
`
`And a separation section that separates the workpiece at the melted modified layer as a
`
`boundary, as Hirata discloses the workpiece which is held on the chuck table 26 and a pressing member
`
`58 exerts astress which separates the wafer from the modified layers 43 (para. 0062).
`
`Hirata does not explicitly state formed by a collection of a laser beam.
`
`The recitation “the workpieces being formedby a collection of a laser beam”is not described in
`
`the specification in sufficient detail to give an understanding of a definition , therefore the broadest
`
`reasonable interpretationis given the plain meaning, “a collection of material”
`
`|”
`
`(Merriam-Webster’s
`
`Collegiate Dictionary, 1982). Hirata is considered to satisfy the limitation “formed by a collection of a
`
`laser beam”, as Hirata discloses the modified layer , which is a collection of materialas defined by the
`
`dictionary cited above, is formed by the laser beam.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CARIDAD EVERHART whosetelephone number is (571)272-1892. The examiner
`
`can normally be reached on M-F 6:00 AM-4:00 PM.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www. uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 8
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Eliseo Ramos-Feliciano can be reached on 571-272-7925. The fax phone number for the organization
`
`wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`through Private PAIR only. For more information about the PAIR system, see https://ppair-
`
`my.uspto. gov/pair/PrivatePair. Should you have questions on accessto the Private PAIR system, contact
`
`the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/CARIDAD EVERHART/
`Primary Examiner, Art Unit 2895
`
`