DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election of Species 1 in the reply filed on 9 August 2024 was previously acknowledged. Claims 6-7 and 11 were previously withdrawn. Claims 3 and 7 have been cancelled. Claims 16-37 were cancelled by preliminary amendment.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
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: claim 1: first moving mechanism (elevating mechanism) which has been interpreted as a ball screw and equivalents thereto as set forth in the specification, e.g., at para. 16; claim 1 second moving mechanism (drive mechanism) which has been interpreted as a motor and equivalents thereto as set forth in the specification, e.g., at para. 16; claim 1: optical system which has been interpreted as a lens or mirror and equivalents thereto as set forth in the specification, e.g., at para. 20.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-5, 8-10 and 13-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Any claim not specifically mentioned is rejected based on its dependence.
Examiner is unable to locate support for claim limitation “a surface area of the photocatalyst held onto the surface of the base is smaller than a surface area of a substrate held onto the table”. Nevertheless, the claims have been examined as written to the best of Examiner’s understanding of the claim language and context of the disclosed invention. Clarification and/or correction is requested.
Examiner is unable to locate support for claim limitation “the second moving mechanism is configured to move the head along the surface of the substrate to process the entire surface of the substrate”. Nevertheless, the claims have been examined as written to the best of Examiner’s understanding of the claim language and context of the disclosed invention. Clarification and/or correction is requested.
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.
Claims 1-2, 4-5, 8-10 and 13-15 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. Any claim not specifically mentioned is rejected based on its dependence.
As the substrate wafer/is not a feature of the apparatus, claim limitation “a surface area of the photocatalyst held onto the surface of the base is smaller than a surface area of a substrate held onto the table” renders the claims indefinite and unclear. Nevertheless, the claims have been examined as written to the best of Examiner’s understanding of the claimed invention in the context of the disclosure. Clarification and/or correction is requested.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1-2, 4-5 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2010/0136884 to Oh et al. in view of U.S. Patent Pub. No. 2009/0050897 to Watanabe.
Regarding claim 1: In Figs. 1-14, Oh et al. disclose a substrate processing apparatus substantially as claimed and comprising: a table (100) for holding (e.g. configured to hold) a substrate; a nozzle (318) for supplying a process liquid to a surface to be process oof the substrate held onto the table; a head (310) for holding (e.g., configured to hold) a polishing pad (311); a conditioner (800) for conditioning the polishing pad; a first moving mechanism (343) for moving (e.g. configured to move) the head in a direction perpendicular to a surface of the table; and a second moving mechanism (341) for moving (e.g. configured to move) the head between the table and the conditioner.
Oh et al. teach that the apparatus as detailed above is provided in order to improve polishing uniformity and product yield (see, e.g., abstract and para. 202) such that it would have been obvious to one of ordinary skill in the art exercising ordinary creativity, common sense and logic to have provided the second moving mechanism configured to move (i.e. capable of moving) the head along the surface of the substrate to process the entire surface of the substrate as desired to provide the improved polishing and product yield.
However, Oh et al. fail to disclose a first light source for emitting light including a first wavelength for exciting a photocatalyst incorporated in the polishing pad, wherein the head includes: a base transparent to the first wavelength; a photo catalyst held onto the surface of the base; and an optical system for directing the light emitted from the first light source to the photocatalyst from a back surface of the base, w.
In Figs. 1-4, Watanabe discloses a substrate (30) processing apparatus wherein the apparatus includes a light source (2) for emitting light including a first wavelength for exciting a photocatalyst (20); and a head for holding (e.g. configured to hold) the photocatalyst and including: a base (1) transparent to the first wavelength; the photocatalyst (20) held onto the surface of the base; and an optical system (122) for directing the light emitted from the first light source to the photocatalyst from a back surface of the base, wherein a surface area (i.e. surface area of a photocatalyst particle) held onto the surface of the base is capable of being smaller than a surface area of the substrate held onto a table (31) for the purpose of providing an apparatus and method capable of smoothly and effectively polishing a substrate without substrate damage (see, e.g., abstract and para. 26).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided Oh et al. including a light source for emitting light including a first wavelength for exciting a photocatalyst; in combination with a head including a base transparent to the first wavelength; a photocatalyst held onto a surface of the base; and an optical system for directing the light emitted from the first light source to the photocatalyst from a back surface of the base, wherein a surface area (i.e. surface area of a photocatalyst particle) held onto the surface of the base is capable of being smaller than a surface area of the substrate held onto a table in order to provide an apparatus and method capable of smoothly and effectively polishing a substrate without substrate damage as taught by Watanabe.
Watanabe does not explicitly disclose a surface area of a photocatalyst particle smaller than a surface area of a substrate worked on by the apparatus, but this appears to be true such that it would have been obvious to one of ordinary skill in the art exercising ordinary creativity, common sense and logic to provide as such, if desired, in accordance with an intended use of the claimed apparatus. Examiner also notes that the substrate is not considered a feature of the claimed apparatus such that the claimed inequality is essentially indeterminable. The courts have ruled that the inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)); and a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With respect to claim 2, in modified Oh et al., Oh et al. disclose the conditioner includes a conditioning tank (810) for holding the process liquid (e.g., remnants thereof remaining on the photocatalyst/catalyst/pad), and the conditioning tank has a dimension enough to accept the photocatalyst/catalyst/pad held onto the head.
With respect to claim 4, in modified Oh et al., the optical system is configured to uniformly (i.e., capable of) irradiate the photocatalyst holed onto the surface of the base with the light (e.g., using first and second moving mechanisms and the optical system). Examiner also notes that the courts have ruled that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, Examiner is unable to decipher any structural differentiation.
With respect to claim 5, in modified Oh et al., Watanabe discloses the apparatus may further comprise a light introduction path (e.g. see arrows in Fig. 1 and dashed line in Fig. 4) for introducing the light from the first light source to the head.
With respect to claim 13, in modified Oh et al., Oh et al. discloses the head includes a process liquid flow passage (326a, 326b) for flowing the process liquid, and the nozzle is in fluid communication with the process liquid flow passage.
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Oh et al. as applied to claims 1-2, 4-5 and 13 as applied above in view of U.S. Patent No. 6,375,971 to Chiesl, III et al.
Regarding claims 8 and 10: modified Oh et al. the apparatus substantially as claimed and as described above.
However, modified Oh et al. fail to disclose a catalyst sensor for measuring an activity degree of the photocatalyst, wherein the catalyst sensor is disposed at the conditioner.
Chiesl, III et al. teach providing a catalyst sensor (152) for measuring an activity degree of a photocatalyst/catalyst/pad wherein the catalyst sensor is disposed at a conditioner (106) for the purpose of, inter alia, monitoring the presence of residual chemical polishing slurry (see, e.g., column 9, rows 21-52).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided a catalyst sensor for measuring an activity degree of the photocatalyst/catalyst/pad wherein the catalyst sensor is disposed at a conditioner (106) in order to, inter alia, monitor the presence of residual chemical polishing slurry as taught by Chiesl, III et al.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Oh et al. as applied to claims 8 and 10 as applied above in view of U.S. Patent Pub. No. 2003/0188829 to Rangarajan et al.
Modified Oh et al. disclose the apparatus substantially as claimed and as described above.
However, modified Oh et al. fail to disclose Chiesl, III et al. fail to disclose the catalyst sensor measures an electrical resistance of the photocatalyst.
Rangarajan et al. teach using electrical resistance monitoring in chemical mechanical processing (CMP) for the purpose of characterizing and/or controlling the same (see, e.g., abstract and paras. 11-12 and claims).
Thus, it would have been obvious to one ordinary skill in the art to have used electrical resistance monitoring in modified Chiesl, III et al. in order to characterize and/or control the CMP apparatus and method as taught by Rangarajan et al.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. as applied to claims 1-2, 4-5 and 13 as applied above in view of U.S. Patent Pub. No.2005/0269577 to Ueda et al.
Modified Oh et al. disclose the apparatus substantially as claimed and as described above.
However, modified Oh et al. fail to disclose the apparatus further comprising a temperature controller for adjusting a temperature of the process liquid and/or the table include a temperature controller for adjusting a temperature of the substrate held onto the table.
Ueda et al. teach providing a temperature controller (Fig. 3, 47) for adjusting a temperature of a substrate held on a table and the temperature controller also adjusting a temperature of a processing liquid for the purposes of, inter alia, reducing substrate warpage and/or increasing processing speed (see, e.g., paras. 28-29, 95, 98 and 100).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided in Oh et al. a temperature controller for adjusting a temperature of a substrate held on a table and the temperature controller also adjusting a temperature of a processing liquid in order to reduce substrate warpage and/or increasing processing speed as taught by Ueda et al.
Response to Arguments
Applicant’s amendments and accompanying arguments with respect to claim(s) 1-2, 4-5, 8-10 and 13-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant does not appear to have considered the prior art applied to dependent claims and the subject matter thereof which now has been substantially incorporated into independent claim 1. Oh et al. and Watanabe (and other previously relied upon references) are still relevant and are relied upon above to reject amended claims 1-2, 4-5, 8-10 and 13-15.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 5,948,697 teaches using catalyst particles in a slurry and/or a pad. USP 7071108 and KR20050092953 disclose apparatus including chemical mechanical polishing slurry containing particles exhibiting photocatalytic function.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KARLA MOORE whose telephone number is (571)272-1440. The examiner can normally be reached Monday-Friday, 9am-6pm EST.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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