DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 12/767,775 and provisional application 61/174,937, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. It should be noted that the disclosure of the prior-filed applications, Application No. 12/767,775 and provisional application 61/174,937, fail to provide adequate support or enablement for a system comprising a current compensation circuitry to produce a ramped voltage at the first node after the voltage step, as recited in newly amended independent claim 1; and/or a system comprising a current compensation circuitry to provide compensation current to the substrate support to produce a ramped voltage between pulses of a periodic voltage function, as recited in newly amended independent claim 12. Accordingly, claims 1-7 are not entitled to the benefit of the prior applications.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-9 of U.S. Patent No. 11,615,941.
Regarding claims 12-14, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant claimed invention are encompassed by, broader than and/or generic to the claims 6-9 of the US Patent 11,615,941, therefore, under a one-way obviousness type double patenting test a prima facie case of obviousness have been established.
It should be noted that the claims of US Patent No. 11,615,941, recite a substrate support (see below highlighted section of claim 1), a switch mode power supply (two switches, see below highlighted section of claim 9), and an ion current compensation component (see below highlighted section of claim 7) configured to provide compensation current to the substrate support to produce the ramped (slope) voltage between the pulses (see the last limitation of claim 6 and claim 7, both highlighted below).
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It should be noted that the limitations of the switch mode power supply configured as claimed in claims 12-13, are directed to method limitations instead of apparatus limitations, and since an apparatus is being claimed as the instant invention, the method teachings are not considered to be the matter at hand, since a variety of methods can be done with the apparatus. The method limitations are viewed as intended uses which do not further limit, and therefore do not patentably distinguish the claimed invention. The switch mode power supply of the apparatus of claims 6-9 of U.S. Patent No. 11,615,941, is capable of providing the claimed voltage to the substrate support, and providing no compensation current to the substrate support, if the method to be performed within the apparatus requires it.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,685,297.
Regarding claims 12-14, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant claimed invention are encompassed by, broader than and/or generic to the claims 1-19 of the US Patent 9,685,297, therefore, under a one-way obviousness type double patenting test a prima facie case of obviousness have been established.
It should be noted that the claims of US Patent No. 9,685,297, recite a plasma processing chamber (see below highlighted section of claims 1, 2, 3), a switch mode power supply (two switching components, see below highlighted section of claim 3), and an ion current compensation component (see below highlighted section of claims 1, 2, 3) configured to provide compensation current to the substrate support to produce a ramped (slope) voltage between the pulses (see the second and last limitation of claim 1 and claim 2, the last limitation of claim 3, and claims 15 and 18, all highlighted below).
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It should be noted that the limitations of the switch mode power supply configured as claimed in claims 12-13, are directed to method limitations instead of apparatus limitations, and since an apparatus is being claimed as the instant invention, the method teachings are not considered to be the matter at hand, since a variety of methods can be done with the apparatus. The method limitations are viewed as intended uses which do not further limit, and therefore do not patentably distinguish the claimed invention. The switch mode power supply of the apparatus of claims 1-19 of U.S. Patent No. 9,685,297, is capable of providing the claimed voltage to the substrate support, and providing no compensation current to the substrate support, respectively, if the method to be performed within the apparatus requires it.
Claims 1-7, 12-14 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 15-20 of U.S. Patent No. 11,978,611.
Concerning claims 1-7, 12-14 and 19-20 although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant claimed invention are encompassed by, broader than and/or generic to the claims 1-7 and 15-20 of US Patent No. 11,978,611, therefore, under a one-way obviousness type double patenting test a prima facie case of obviousness have been established.
It should be noted that the claims of US Patent No. 11,978,611 recite a system comprising: a first node (see below highlighted section of claims 1, 15); a power supply to apply a voltage between a second node and a third node (see below highlighted section of claims 1-2, 15-16); a first switch (see below highlighted section of claims 1, 15) that couples the second node to the first node, and responsive to the first switch being closed, a peak voltage is applied at the first node; a second switch (see below highlighted section of claims 1, 15) that couples the third node to the first node, and responsive to the second switch being closed, a voltage is applied at the first node; and current compensation circuitry (see “second power supply” in the below highlighted section of claims 1, 15) configured to provide compensation current to the substrate support to produce a ramped voltage between the pulses (see the last limitation of claims 1 and 15, and claims 7 and 20, below). Note that the switch mode power supply of claim 12 reads on the first and second switch components (see below highlighted section of claims 1 and 15).
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It should be noted that the limitations of the switch mode power supply configured as claimed in claims 12-13, are directed to method limitations instead of apparatus limitations, and since an apparatus is being claimed as the instant invention, the method teachings are not considered to be the matter at hand, since a variety of methods can be done with the apparatus. The method limitations are viewed as intended uses which do not further limit, and therefore do not patentably distinguish the claimed invention. The switch mode power supply of the apparatus of claims 1-7 and 15-20 of US Patent No. 11,978,611, is capable of providing the claimed voltage to the substrate support, and providing no compensation current to the substrate support, respectively, if the method to be performed within the apparatus requires it.
Claims 1-7, 12-14 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. 11,011,349.
Concerning claims 1-7, 12-14 and 19-20 although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant claimed invention are encompassed by, broader than and/or generic to the claims 9-12 of US Patent No. 11,011,349, therefore, under a one-way obviousness type double patenting test a prima facie case of obviousness have been established.
It should be noted that the claims of US Patent No. 11,011,349, recite a system comprising: a power supply (see below highlighted section of claims 9); a first switch (see below highlighted section of claims 9-10) that would couple a second node to the first node; a second switch (see below highlighted section of claims 9-10) that would couple a third node to the first node; and current compensation circuitry (see “negative DC voltage source” in the below highlighted section of claim 9) configured to provide compensation current to the substrate support to produce a ramped voltage between the pulses (see the last limitation of claim 9 below). Note that the switch mode power supply of claim 12 reads on the first and second switch components (see below highlighted section of claims 9-12), and the claimed first, second, and third nodes, are inherently part of the apparatus structure in order to connect the power supply, and the first and second switches to the substrate support.
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It should further be noted that the limitations of the first and second switches use as claimed, and the switch mode power supply configured as claimed in claims 12-13, are directed to method limitations instead of apparatus limitations, and since an apparatus is being claimed as the instant invention, the method teachings are not considered to be the matter at hand, since a variety of methods can be done with the apparatus. The method limitations are viewed as intended uses which do not further limit, and therefore do not patentably distinguish the claimed invention. The first and second switches, and the switch mode power supply, of the apparatus of claims 9-12 of US Patent No. 11,011,349, are capable of providing the claimed voltage to the substrate support, and providing no compensation current to the substrate support, respectively, if the method to be performed within the apparatus requires it.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. US 12,154,759.
Concerning claims 12-14 although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant claimed invention are encompassed by, broader than and/or generic to the claims 1-6 of US Patent No. 9,287,092, therefore, under a one-way obviousness type double patenting test a prima facie case of obviousness have been established.
It should be noted that the claims of US Patent No. 12,154,759, recite a system comprising: a power supply (see below highlighted section of claim 1); a switch-mode power supply (see “at least one switch” in the below highlighted section of claim 1, and the below highlighted section of claim 4); and current compensation circuitry (see “second power supply” in the below highlighted section of claim 1, and “current component” in the below highlighted section of claim 4), configured to provide compensation current to the substrate support to produce a ramped (sloped) voltage between the pulses (see second highlighted limitation of claims 1 and 4 below).
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It should be noted that the limitations of the switch mode power supply configured as claimed in claims 12-13, are directed to method limitations instead of apparatus limitations, and since an apparatus is being claimed as the instant invention, the method teachings are not considered to be the matter at hand, since a variety of methods can be done with the apparatus. The method limitations are viewed as intended uses which do not further limit, and therefore do not patentably distinguish the claimed invention. The switch mode power supply, of the apparatus of claims 1-6 of US Patent No. 12,154,759, is capable of providing the claimed voltage to the substrate support, and providing no compensation current to the substrate support, respectively, if the method to be performed within the apparatus requires it.
Response to Arguments
Applicant’s arguments, see pages 8-12, filed 12/31/2025, with respect to the rejections of claims 1-7, 12-14 and 19-20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, have been fully considered and are persuasive. Therefore, the rejections of claims 1-7, 12-14 and 19-20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, have been withdrawn.
Applicant’s arguments, see pages 12-13, filed 12/31/2025, with respect to the rejections of claims 1-7, 12-14 and 19-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. Therefore, the rejections of claims 1-7, 12-14 and 19-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been withdrawn.
The amendments to independent claims 1 and 12, and applicant’s arguments, see pages 13-18, filed 12/31/2025, with respect to the rejection of claims 1-7, 12-14, 19-20 under 35 U.S.C. 102(b) over the Dhindsa et al. (US 2005/0039682), the rejection of claims 1-7, 12-14, 19-20 under 35 U.S.C. 102(b) over the Nakamura et al. (US 4,798,650), the rejection of claims 1-7, 12-14, 19-20 under 35 U.S.C. 102(b) over the Sugata et al. (US 4,898,798), the rejection of claims 1,3-5, 7, 12-14, 19-20 under 35 U.S.C. 102(b) over Otsubo et al. (US 5,531,862), the rejection of claims 12-14 under 35 U.S.C. 102(b) over Paterson et al. (US 2007/0246163), the rejection of claims 12-14 under 35 U.S.C. 102(b) Pipitone (US 2009/0044750), the rejection of claims 12-14 under 35 U.S.C. 102(b) over Sato et al. (US 5,242,561), Berglund et al. (US 5250,165), the rejection of claims 12-14 under 35 U.S.C. 102(b) over Kitsunai et al. (US 2007/0035908), and the rejection of claims 12-14 under 35 U.S.C. 102(b) over Lantsman (US 5,573,597), have been fully considered and are persuasive. Therefore, the rejection of claims 1-7, 12-14, 19-20 under 35 U.S.C. 102(b) over the Dhindsa et al. (US 2005/0039682), the rejection of claims 1-7, 12-14, 19-20 under 35 U.S.C. 102(b) over the Nakamura et al. (US 4,798,650), the rejection of claims 1-7, 12-14, 19-20 under 35 U.S.C. 102(b) over the Sugata et al. (US 4,898,798), the rejection of claims 1,3-5, 7, 12-14, 19-20 under 35 U.S.C. 102(b) over Otsubo et al. (US 5,531,862), the rejection of claims 12-14 under 35 U.S.C. 102(b) over Paterson et al. (US 2007/0246163), the rejection of claims 12-14 under 35 U.S.C. 102(b) Pipitone (US 2009/0044750), the rejection of claims 12-14 under 35 U.S.C. 102(b) over Sato et al. (US 5,242,561), Berglund et al. (US 5250,165), the rejection of claims 12-14 under 35 U.S.C. 102(b) over Kitsunai et al. (US 2007/0035908), and the rejection of claims 12-14 under 35 U.S.C. 102(b) over Lantsman (US 5,573,597), have been withdrawn.
The amendments to independent claims 1 and 12 overcome the rejection of claims 1-7, 12-14, and 19-20 on the ground of nonstatutory double patenting over U.S. Patent No. 9,287,092.
The amendment to independent claim 12 overcome the rejection of claims 12-14 on the ground of nonstatutory double patenting over U.S. Patent No. 9,287,086.
The amendments to independent claim 12 overcome the rejection of claims 12-14 on the ground of nonstatutory double patenting over U.S. Patent No. 9,309,594.
The amendments to independent claim 12 overcome the rejection of claims 12-14 on the ground of nonstatutory double patenting over U.S. Patent No. 9,435,029.
Applicant's arguments, see pages 7-8, filed 12/31/2025 have been fully considered but they are not persuasive with respect to the claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c), to Application No. 12/767,775 and provisional application 61/174,937. In specific, applicant argues that “The Office appears to infer that because the application lineage includes continuation-in-part (CIP) applications, the earlier applications lacked support for each and every claim limitation.”. The examiner respectfully disagrees and contends that the fact that the application lineage includes CIP applications has no weight in the determination of the proper support of the claimed subject matter. A CIP application in an application lineage can properly provide support for the claimed subject matter of a later-filed application, as clearly shown by the fact that the instant claimed invention has been permitted to claim benefit from CIP application 13/193299 and CIP application 12/870837, since both of these applications provide the proper support for the claimed subject matter. Additionally, the lack of support is not “for each and every claim limitation” as argued by applicant. As clearly stated in the previous office action, the disclosure of the prior-filed applications, Application No. 12/767,775 and provisional application 61/174,937, fail to provide adequate support or enablement for a system comprising a current compensation circuitry configured to produce a ramped voltage at the first node after the voltage step, as recited in newly amended independent claim 1; and/or a system comprising a current compensation circuitry configured to provide compensation current to the substrate support to produce a ramped voltage between pulses of a periodic voltage function, as recited in newly amended independent claim 12. Therefore, claims 1-7 are not entitled to the benefit of the prior applications, Application No. 12/767,775 and provisional application 61/174,937.
With respect to the double patenting rejections of the claims, applicant further argues that the Office has not provide a detailed element-by-element comparison demonstrating how each limitation of the pending claims corresponds to specific limitation in other patents. The examiner respectfully disagrees and contends that the previous office action clearly detailed the limitations of the pending claims in comparison with specific limitation in other patents. As stated in the above arguments, the amendments to independent claim 1 and/or independent claim 12 overcome the rejection of claims 1-7, 12-14, and 19-20 on the ground of nonstatutory double patenting over U.S. Patent No. 9,287,092, the rejection of claims 12-14 on the ground of nonstatutory double patenting over U.S. Patent No. 9,287,086, the rejection of claims 12-14 on the ground of nonstatutory double patenting over U.S. Patent No. 9,309,594, and the rejection of claims 12-14 on the ground of nonstatutory double patenting over U.S. Patent No. 9,435,029. However, the examiner respectfully contends that, as stated in the above double patenting rejections, the rejection of claims 12-14 on the ground of nonstatutory double patenting as being unpatentable over claims 6-9 of U.S. Patent No. 11,615,941, the rejection of claims 12-14 on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,685,297, the rejection of claims 1-7, 12-14 and 19-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 15-20 of U.S. Patent No. 11,978,611, the rejection of claims 1-7, 12-14 and 19-20 on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. 11,011,349, and the rejection of claims 12-14 on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. US 12,154,759, are still proper and, therefore, are respectfully maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wilson (US 2013/0220549) is cited for its teachings of a system comprising a power supply and a DC power supply coupled to the substrate support.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUZ L ALEJANDRO whose telephone number is (571)272-1430. The examiner can normally be reached Monday and Thursday, 8:30 a.m. - 5:00 p.m..
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh can be reached at 571-272-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUZ L ALEJANDRO MULERO/ Primary Examiner, Art Unit 1716
April 27, 2026
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