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`UNITEDSTATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/456,914
`
`11/30/2021
`
`Atsushi HARIKAT
`
`ISHII-65436
`
`1770
`
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND,OH 44114-3108
`
`CHOLCALVIN Y
`
`2812
`
`04/11/2024
`
`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):
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`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-5 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-5 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 30 November 2021 is/are: a)¥) accepted or b)L) 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)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240405
`
`Application No.
`Applicant(s)
`171456,914
`HARIKAI etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`CALVIN Y CHOI
`2812
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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
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`1) Responsive to communication(s) filed on 30 November 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)() 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)(2) 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: 17/456,914
`Art Unit: 2812
`
`Page 2
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`DETAILED ACTION
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`1.
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`This Office Action is in response to the application filed on 30 November 2021.
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`Notice of Pre-AlA or AIA Status
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`2.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
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`3.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`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 (i.e., changing from AIA to pre-AlA) 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 the same
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`under either status.
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`5.
`
`Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sandoh (US
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`2018/0096892 A1; hereinafter Sandoh), in view of Harikai (US 9,076,859 B2; hereinafter Harikai).
`
`6.
`
`In regards to claim 1, Sandoh teaches an element chip manufacturing method comprising:
`
`°
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`a preparing process of preparing a substrate (WS) [0029] including a plurality of element
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`regions (W1D) [0029] and a dividing region (L) [0029] that defines the element regions, the
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`substrate having a first principal surface (W1) [0026] and a second principal surface (W2) [0026]
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`located opposite to thefirst principal surface (fig. 3; [0026]);
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`

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`Application/Control Number: 17/456,914
`Art Unit: 2812
`
`Page 3
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`°
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`a groove forming process of forming a groove (30) [0032] in the dividing region from the
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`first principal surface side of the substrate [0032]; and
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`°
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`a grinding processof grinding (S5) (fig. 2; fig. 7; [0040]) the substrate from the second
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`principal surface side, to divide the substrate into a plurality of element chips,
`
`e
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`in the grinding process, grinding of the substrate is performed until reaching the first
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`region of the groove(fig. 4 and [0035]: e.g. plasma (25) anisotropically affects upper-side (W1)
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`of (30); andfig. figs. 7-8: the backside grind is performed until the plasma affected areais
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`reached to singulate devices (D)).
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`7.
`
`Sandoh appearsto besilent as to, but does not preclude, the limitations wherein the groove
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`formed in the groove forming process includesa first region constituted by a side surface havinga first
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`surface roughness, and a second region constituted by a side surface having a second surface roughness
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`larger than the first surface roughness. Harikai teachesthe limitations wherein the groove formed in the
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`groove forming processincludesa first region constituted by a side surface having a first surface
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`roughness, and a second region constituted by a side surface having a second surface roughnesslarger
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`than the first surface roughness(col. 5/Ins. 1-3: irradiation with plasma (19) roughens top andside
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`surfacesof (7) but not (3)). It would have been obvious to one having ordinaryskill in the art at the time
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`the application at hand was filed to modify the limitations taught by Sandoh with the aforementioned
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`limitations taught by Harikai to assist with a subsequent griding process (Harikai col. 5/Ins. 20-33).
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`8.
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`In regards to claim 2, the combination of Sandoh and Harikai teaches the limitations discussed
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`abovein addressing claim 1. Sandoh further teaches the limitations wherein the groove forming process
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`includes:
`
`e
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`a first plasma processing process of trenching the substrate by continuously etching the
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`substrate, to form the first region [0034-0037]; and
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`

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`Application/Control Number: 17/456,914
`Art Unit: 2812
`
`Page 4
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`e
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`a second plasma processing process of trenching the substrate by repeating an etching
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`step of etching the substrate, a depositing step of depositing a protection film, and a protection
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`film removing step of removing at least a portion of the protection film, to form the second
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`region [0034-0037].
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`9.
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`In regards to claim 3, the combination of Sandoh and Harikai teaches the limitations discussed
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`abovein addressing claim 2. Sandoh further teaches the limitations wherein the groove forming process
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`is started from the first plasma processing process [0034-0037].
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`10.
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`In regards to claim 4, the combination of Sandoh and Harikai teaches the limitations discussed
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`abovein addressing claim 2. Sandoh further teaches the limitations wherein, in the groove forming
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`process, the first plasma processing process and the subsequent second plasma processing process are
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`performedlast [0037], and, in the grinding process, grinding of the substrate is performed until reaching
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`the first region of the groove, the first region having been formedin the first plasma processing process
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`performedlast [0040].
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`11.
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`In regards to claim 5, the combination of Sandoh and Harikai teaches the limitations discussed
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`abovein addressing claim 2. Sandoh further teaches the limitations wherein, in the groove forming
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`process, the first plasma processing process is performed last [0037], and, in the grinding process,
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`grinding of the substrate is performed until reaching the first region of the groove, the first region
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`having been formedin the first plasma processing process performed last [0040].
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`Conclusion
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`12.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to CALVIN Y CHOI whose telephone number is (571)270-7882. The examiner can
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`normally be reached M-F 9-5 (Pacific Time).
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`

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`Application/Control Number: 17/456,914
`Art Unit: 2812
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`Page 5
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`13.
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`Examiner interviewsare available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request(AIR) at 3
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`14.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`William Partridge can be reached on (571) 270-1402. The fax phone number for the organization where
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`this application or proceedingis assigned is 571-273-8300.
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`15.
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`Information regarding the status of published or unpublished applications may be obtained from
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`Patent Center. Unpublished application information in Patent Center is available to registered users. To
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`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`CALVIN Y. CHOI
`
`Primary Examiner
`Art Unit 2812
`
`/CALVIN Y CHOI/
`Primary Examiner, Art Unit 2812
`
`