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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
`
`16/426,076
`
`05/30/2019
`
`Hidehiko KARASAKI
`
`ISHII-60991
`
`1140
`
`meesne
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST OTH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`WOLDEGEORGIS, ERMIAS T
`
`2893
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/03/2020
`
`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*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 1-7 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
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`) )
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`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)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 5/30/2019.
`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 20200227
`
`Application No.
`Applicant(s)
`16/426,076
`KARASAK| et al.
`
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`
`ERMIAS TWOLDEGEORGIS_|2893 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) Responsive to communication(s) filed on 5/30/2019.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) 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\(Z 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: 16/426,076
`Art Unit: 2893
`
`Page 2
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`DETAILED ACTION
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`1.
`
`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined underthe
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`first inventor to file provisions of the AIA.
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`2.
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`Priority
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`Acknowledgment is made of applicant's claim for foreign priority under 35
`
`U.S.C. 119(a)-(d).
`
`3.
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`Information Disclosure Statement
`
`The information disclosure statementfiled on 5/30/2019 has been acknowledged and a
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`signed copy of the PTO-1449 is attached herein.
`
`4.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 theclaimed invention as a whole would have been obviousbefore 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.
`
`5. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over LEI ¢i ai GUS
`
`20924322233 Al, hereinafier “LEQ in view of Takanashi ct al. (OS 2006A)1GSS44
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`

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`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 3
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`Al, heremafter “Pekanas hi”) and Morishies et al (US 2008/0076233 Al, hereinafter
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`“Morishige”)
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`In regards to claim 1, LEE a method for manufacturmg an clement chip, comprising:
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`a preparation step of preparing a substrate, (see, forexample, Pig. 64) the
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`substrate (406) having a first surface and a second surface apposite to the first surface. and
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`mcludmne a plurality of clement regions (425, 426, Pig. 4A} anddividing regions (427, Fig. 44}
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`defining the clement regions (425, 426), the substrate (4441) being held on aboklng sheet (4b0)
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`arn the second surface side;
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`aprotective fini (402) formation step of applying a mixture containing a water-
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`sohible resin anda solvent (See, forexampie, Pars [R033] and [0034]} tothe first surface of the
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`substrate, to form a protective film contammeg the water-soluble resiy
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`alaser grooving step ol uradiaimg (See, forexample, Fig. 4B). with laser heht.
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`portions of the protective film (402) that cover the dividing regions (427), to remove the portions
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`covering the dividing regions, and expose the first surface of the substrate m the dividing regions
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`(27),
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`adicing step (See, forexample, Fig. 40) of dicing the substrate into a pluralay of
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`element chips by plasma etching (See, forexample, Par [)030) the substrate fromthe first
`
`surface to the second surface im the dividing regions in a state m which the clement regions are
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`covered by the protective film (see, Fiz. 4}; and
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`aremoval step of removing the portions of the protective Tim that cover the
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`clement regions (See, forexample, Fig. 4D and Par [O0523)),
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`

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`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 4
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`wherein the water-soluble resin has a meling pomt of 250°C or more, or a
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`decornmpasition termperature of 450°C or more, and
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`the protective film has an absorption coefficient of 1 absL/gcm'! or more fora
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`wavelength of the laser heht.
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`LEI fails to explicitly teach that wherein the water-saluble resin has a melting
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`pomt of 250°C or more, or a decomposition temperature of 430°C or more, and
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`the protective film has an absorption coefficient of 1 absl/genr! or more fora
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`wavelonsth of the laser light.
`
`Takanashi while disclosmg protective film agent teaches that the protective film
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`has an absorption coefficient of | absL/gcur! or more for a wavelength ofthe laser ight Cin the
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`protective film agent of the present invention, itis preferred that (i) the ¢ absorption
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`coe Hicient k, for laser light with a wavelength of 333mm, of the solids ofthe solution be
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`within the range of 3X10" te 2.5h10" abs L/g....See forexample, Pars [6014] and [06151
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`therefore, by dividing this absorption coefficient by the thickness of the protective
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`film as taught by Taxanashi, the prior art teachesthe inuiation).
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`Theretore, # would have been obvious to one havmg ordmary stall mthe art at the time the
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`prvention was made to rnodily LEE by Takanashi because this wouk) help facilitates the removal
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`of the protective film atthe laser grooving step.
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`

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`Application/Control Number: 16/426,076
`Art Unit: 2893
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`Page 5
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`LEP as modified by Takanashi further fails to explicitly teach that the water-
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`soluble rosin has amicHimg pomt of 250°C or raore, or a decomposition ternperature of 450°C or
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`mare.
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`Morishiee while disclosing a laser processing method teaches the water-soluble
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`resin has ameling point of 250°C or more, or a decomposition termperature of 450°C or more
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`(.. pratective Glm has heat resistance (e.g. 400 depree.C)... see Par [0053)).
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`Therefore, # would have been obvious to onc having ordinary skill
`
`in the art at the
`
`ume the invention was roade have a ngher melange pomt because this would help prevent the
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`clement regions from bemg affected by the laser grooving process when hat debris are bemg
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`generated.
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`In regards to clawns 2 and 3, LEI as modified above teaches all imitations of claim | brit
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`fais toexphcily teach that the water-schible resin absorbs the laser hght in the laser grooving
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`step; and the mixtere further contains a photosensitizer that absorhs the laser ight.
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`Takanashi while disclosing a protective film agent teaches the water-soluble resin
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`absorbs the laser light
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`in the laser grooving step (See, forexample, Par [O13 ): and the mixture
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`further contains a photosensitizer that absorbs the laser light (See, for example, Pars [0083],
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`[G0461, and [0047 }).
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`Therefore, # would have boen obvious to one having ordinary skill
`
`in the art at the time
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`the invention was made to mexdify LED by Takanasht because this would help facilitates the
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`removal of ihe protective fin atthe laser grooving step.
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`

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`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 6
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`In regards to claim4, LET disclases (Figs. 44-4D) the substrate includes an clectrode (See, for
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`example, 312 in Big. 3} on the first surface, and the mixture has a pH less than 7 (Ree, fer
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`example, Par [6053)).
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`However, LET fads to exphcith teach that the PHfalls between 5S and 8.
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to have the PH values fall between 5 and 8, since it has been held that where
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`the general conditions of a claim are disclosed in the prior art, discovering the optimum or
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`workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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`In regards to clan 5, LET discloses (Pies. 4A-4D) that the wavelength of the laser light is 250
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`nro or more and 360 nro or less (See, for example, Par [0046]).
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`in regards to clann 6, LET discloses (Pies. 44-4D) in the removal step, the protective film is
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`removed by being brought into contact with an aqueous lund cleaner (See, for example, Par
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`[OO33]3.
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`6. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over LEI in view of
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`Takanashi ark Morishige as appliedto claim 1 shove, and further in view of Kitahara et
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`al (OS 2030/01 29548 Al, hereinafler “Kitahara™)
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`In regards to claim 7, LED as modified above discloses all Rmitations of chair | but fails to
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`explhoily teach that the mixture has a viscosity of 100 mPa- s or tess at 20°C.
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`

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`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 7
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`Katahara while disclosing 4 protective film teaches that the mixture has a viscosity of 100
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`rmPa-s or less at 20°C (See, for example, Pars [00101, (0041), [0G43).
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`Therefore, it would have been obvious to one having ordinary skill
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`in the art at the time
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`the invention was made to incorporate the concept of the method of Kitahara into LEI because
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`the affinity of the liquid resin to the work surface of the wafer in the spin coating step is
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`improved, and the protective film is uniformly formed on the work surface of the wafer, thus
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`improving the rate of contribution of the liquid resin to the protective film to reduce the amount
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`of usage of the liquid resin.
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`7.
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`Correspondence
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone numberis
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`(571)270-5350. The examiner cannormally be reached on Monday-Friday 8 am-5 pm E.S.T..
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Matthew Smith can be reached on 571-272-1907. The fax phone numberfor the
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`organization wherethis application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 16/426,076
`Art Unit: 2893
`
`Page 8
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`
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`
`/ERMIAS T WOLDEGEORGIS/
`Primary Examiner, Art Unit 2893
`
`