DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 11/11/2025 has been entered.
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 .
Claims Status
The amendment filed 11/11/2025 has been entered. Claims 1-5 and 7-12 are pending.
Claim 9 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/30/2020.
In the amendment filed 11/11/2025, claims 1 and 10 were amended, claims 11 and 12 were newly added, and no claims were cancelled. Therefore, claims 1-5, 7-8, and 10-12 are under examination.
Claim Objections
Claim 12 is objected to because of the following informalities: line 1-2 of the claim should recite “the end point detection circuitry is further configured to determine. Appropriate correction is required.
Claim Interpretation
In claim 1 and 10 and the claims dependent therefrom, the first output is interpreted inclusive of a value that is output and then processed by the change detection circuitry and then used in the end point detection circuitry. This is consistent with the instant specification as filed. Applicant is encouraged to consider amending the claims to refer to “first output value” so that it is clear the output is not a signal sent to the motors (e.g. not a feedback signal).
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“holding section” in claim 1-5, 7-8 and 10 interpreted as a top ring [0064] and equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-5, 7-8, and 11-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "”the present first output" in line 23-24. There is insufficient antecedent basis for this limitation in the claim. Applicant is kindly requested to amend the claim for clarity and to provide antecedent basis for the term such as by amending the claim to recite “a present time point first output value”. For purpose of examination on the merits and consistent with the instant specification, the claim is being examined as if the limitation refers to “a present time point first output value”.
Claim 1 recites the limitation "the swing cycle count" in line 24-25. There is insufficient antecedent basis for this limitation in the claim. Applicant is kindly requested to amend the claim for clarity and to provide antecedent basis for the term such as by amending the claim to recite “a swing cycle count”. For purpose of examination on the merits and consistent with the instant specification, the claim is being examined as if the limitation refers to “a swing cycle count”.
Claim 1 recites the limitation "”the present time point" in line 25. There is insufficient antecedent basis for this limitation in the claim. Applicant is kindly requested to amend the claim for clarity and to provide antecedent basis for the term such as by amending the claim to recite “the present time point first output value”. For purpose of examination on the merits and consistent with the instant specification, the claim is being examined as if the limitation refers to “the present time point first output value”. Note that this suggestion requires that the suggested amendment is made to line 23-24 as suggested above, so that there will be antecedent basis for “the present time point first output value”. If all of the suggestions provided herein are applied, lines 23-25 of claim 1 will read “wherein the end point detection circuitry is configured to determine, based on a present time point first output value and a plurality of past first outputvalues stored in the end point detection circuitry, a swing cycle count to which the present time point first output value corresponds.” Note these suggestions incorporate the suggestion provided in the claim interpretation section to refer to “first output value” rather than “first output”.
Claim 10 recites the limitation "the polishing end point" in line 21. There is insufficient antecedent basis for this limitation in the claim. Applicant is kindly requested to amend the claim for clarity and to provide antecedent basis for the term such as by amending the claim to recite “the end of polishing is determined…” in line 22-23 or by amending line 19 to recite “indicating a polishing end point based on the increased”, so that consistent terminology is being used. For purpose of examination on the merits and consistent with the instant specification, the claim is being examined as if the limitation refers to “the end of polishing is determined…”.
Regarding claim 11, the claim is unclear because there is no antecedent basis for “the detected swing cycle” in line 2-3 of the claim and because the claim appears to be directed to the same detection circuitry configuration required by line 23-25 of claim 1. A review of the specification provides no clarity on how or if these are different configurations. For purpose of examination on the merits, the claim is interpreted inclusive of referring to the same configuration in different wording. Applicant is kindly requested to consider cancelling claim 11 or otherwise providing clarity as to how this is an additional limitation. Note that if claim 11 is canceled, claim 12 should be amended to depend from claim 1.
Claim 12 recites the limitation "the swing cycle" in line 3. There is unclear antecedent basis for this limitation in the claim because prior claims from which claim 12 depends refer to the swing cycle count (claim 1), count of swing cycle (claim 11) and the detected swing cycle (claim 11), but there is no reference to just “a swing cycle”. Applicant is kindly requested to amend the claim for clarity and to ensure clear antecedent basis for the term such as by amending the claim to recite “the swing cycle count to a second or later swing cycle” in line 3. For purpose of examination on the merits and consistent with the instant specification, the claim is being examined as if the limitation refers to “the swing cycle count to a second or later swing cycle”.
The remaining claims are included for their dependence from a claim addressed above.
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 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.
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 was not commonly owned as of the effective filing date of the later invention in order for the examiner 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 against the later invention.
Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (prev. presented US 5,904,608) in view of Suzuki (prev. presented WO 2016/035673 citing English equivalent US 2017/0282325) and Sandhu (prev. presented US 2001/0001755).
Regarding claim 10, Watanabe teaches a polishing apparatus (abstract, Fig 1) comprising: a first electric motor (5 Fig 1) configured to drive to rotate a polishing table (col 3, ln 15-25) that can hold a polishing pad (polishing cloth, see col 3, ln 12-20); a second electric (4 Fig 1) motor configured to drive to rotate a holding section (top ring 2) (col 3, ln 15-25) configured to hold the polishable object (workpiece) (col 3, ln 14-20) and to press the polishable object against the polishing pad (polishing cloth) (Fig 1, the workpiece in top ring 2 faces the polishing cloth on turntable 1 and col 3, ln 14-22 teaches they are pressed together); a third electric motor (6 Fig 1) configured to swing a swing arm (3 Fig 1) that holds the holding section (2 Fig 1) around a swing center on the swing arm (around unlabeled vertical rod extending from 6 to 3 in Fig 1) (col 3, ln 15-25); and a detection circuitry (8-1, 8-2, or 8-3 Fig 1 and col 3, ln 22-30) configured to detect a current value of one electric motor of the first, second and third electric motors and/or a torque command value of the one electric motor (detect the torque command value, col 3, ln 22-30) and to generate a first output (shown in Fig 1 as the line from 8-1, 8-2, 8-3 to control unit 10 and col 3, ln 25-40 teaches the control unit obtains the values from the torque detectors, see also col 3, ln 65 to col 4 line 5 referring to the outputs of the torque detectors). Watanabe teaches a control unit (control unit 10 Fig 2) configured to process the first output (col 3, ln 30-50) while swinging the swing arm around the swing center on the swing arm using the third electric motor (col 3, ln 30-45 see control unit controlling the drives of the motors including motor 6 and that comparisons are performed during polishing). Watanabe fails to teach a non-transitory computer readable medium having stored thereon computer readable instructions that upon execution by a computer, cause the polishing apparatus to at least perform the operations comprising: detecting a change of a frictional force between the polishing pad and the polishable object by increasing a change amount of the first output and fails to teach detecting a polishing end point indicating an end of polishing based on the increased change amount of the first output while causing the polishable object to swing around the swing center on the swing arm and polishing the polishable object. Addressing the same problem of polishing and control of a polishing apparatus (abstract), Suzuki teaches a polishing end point detection apparatus (60 Fig 3-4 or 29 Fig 10) for determining and signaling the polishing endpoint [0096]. Suzuki further teaches that the motor current or torque current [0007] is detected and the signal is output ([0095] or [0143]) to perform endpoint detection ([0095-0096], [0143-0144], [0150-0155]) and teaches the signal changes over time [0101] and increases [0102] and teaches actively increasing the change amount of the signal (output) by rectifying it ([0016] or [0144-0145] or [0150-0155]). Suzuki further teaches that the endpoint detection circuitry is configured to detect the polishing end point based on the increased change amount (rectified signal) of the first output during polishing [0144-0145], [0150-0155] (see also Fig 3-4 in which the adjustment unit 64 which performs the rectifying then sends the signal to the end point detection unit 68). This is performed during the polishing to detect the end point of the polishing. Suzuki further teaches the polishing end point is determined based on a comparison of the increased change amount of the first output to a stored reference value corresponding [0155]. Not that the stored reference value corresponding to a prior swing cycle is inclusive of corresponding to prior operations of the apparatus. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a threshold value corresponding to prior test runs (prior swing cycle) because test runs are how end point threshold values are determined. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus and control circuitry of Watanabe to include a change detection circuitry configured to increase a change amount of the first output because Suzuki has demonstrated this technique allows for endpoint detection [0008] with less noise [0034] and to include the end point detection of Suzuki in the apparatus of Watanabe because endpoint detection allows for avoiding excessive polishing which damages the surface (Suzuki [0004]). Regarding the non-transitory computer readable medium having stored thereon computer readable instructions that upon execution by a computer, cause the polishing apparatus to at least perform the operations, Watanabe teaches a control unit (control unit 10 Fig 2) configured to process the first output (col 3, ln 30-50) while controlling the operation of the polishing unit (col 3, ln 30-45 see control unit controlling the drives of the motors including motor 6 and that comparisons are performed during polishing) but fails to explicitly teach this includes a non-transitory computer readable medium. Addressing the same problem of polishing and control of a polishing apparatus (abstract and [0061]), Sandhu teaches a controller (72 and 74 Fig 1) for controlling the polishing apparatus [0053], [0085] which controls the polishing by the apparatus [0053-0054] including control by a computer [0053], [0085] (note this includes a computer readable medium with instructions executed by a computer). Sandhu further teaches that the motor current is detected and the signal is processed [0061] as part of endpoint detection as part of the apparatus control. The controller of Sandhu is configured to receive and process motor current signals and end point determinations. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus and control unit of Watanabe and of Watanabe in view of Suzuki to include non-transitory computer readable medium having stored thereon computer readable instructions that upon execution by a computer, cause the polishing apparatus to at least perform the operations because this represents a simple substitution of one known element (computer controller of Sandhu) for another (control unit of Watanabe) to obtain predictable results (processing of the sensor outputs and control of the polishing by the polishing apparatus including control of the motor to perform the swinging by the swing arm).
Allowable Subject Matter
Claims 1-5, 7-8, and 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Note that claim 11 was suggested as being canceled to overcome the raised issues and therefore is not indicated as being allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b). Also note that if claim 11 is canceled, claim 12 must be amended to depend from claim 1.
The following is a statement of reasons for the indication of allowable subject matter: The prior art alone or in combination fails to teach or fairly suggest all the limitations of claim 1 above and in particular “the end point detection circuitry is configured to determine, based on a present time point first output value and a plurality of past first outputvalues stored in the end point detection circuitry, a swing cycle count to which the present time point first output value corresponds” within the context of claim 1 as a whole. As applicant persuasively argues (see reply filed 11/11/2025 p 6-7), the previously applied combination of Watanabe (US 5,904,608) in view of Suzuki (WO 2016/035673 citing US 2017/0282325) fails to teach or fairly suggest a mechanism for associating signal changes with specific swing cycles or searching stored values to determine the swing cycle count. No additional prior art was identified that teaches or fairly suggests this limitation. Therefore claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b).
The remaining claims are included for their dependence from a claim addressed above.
Response to Arguments
Applicant's arguments filed 11/11/2025, hereinafter reply, have been fully considered but they are not persuasive as to the allowability of all pending claims.
The arguments regarding claim 1 (reply p 6-7) have been persuasive as to the allowability of the subject matter of claim 1 and the office action herein reflects that claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b).
The arguments regarding claim 10 (reply p7-8) are not persuasive because the arguments point to language that was previously in the claim prior to the board decision affirming the prior rejections. Additionally, although the amended language was not argued in the reply, the prior art of record teaches the comparison of the increased change amount to a threshold value as now cited in the rejection above. Therefore the argument is not persuasive. Applicant may wish to consider adding the language of claim 1 that was amended to bring claim 10 into condition for allowance.
For these reasons the arguments are not persuasive as to the allowability of all pending claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2014/0295737 discusses determining of the change value exceeds a predetermined value [0020]. US 2002/0142706 disclosed measured values for oscillation cycles [0035] but does not disclose any determination of cycle count. US 5,770,521 teaches determining if the predetermined number of oscillations/total time has elapsed (col 6, ln 5-10).
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/MARGARET D KLUNK/Examiner, Art Unit 1716
/KEATH T CHEN/Primary Examiner, Art Unit 1716