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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11 September 2026 has been entered.
Election/Restrictions and Claim status
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 Claims 6-7 and 11 were previously withdrawn.
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).
Claims 3, 7-9 and 16-37 are cancelled.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 154 and 156.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show catalyst sensor and probes disposed in the conditioning tank, as described in the specification at para. 41. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 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 “the second moving mechanism is configured to move the head along the surface of the substrate to process the entire surface of the substrate” (emphasis added). 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.
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, 10 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 and U.S. Patent Pub. No. 2017/00472237 to Kobata et al.
Regarding claims 1 and 10: 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 to be processed; 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).
Modified Oh et al. fail to disclose the substrate processing apparatus further comprises a catalyst sensor for measuring an activity degree of the photocatalyst, and wherein the catalyst sensor measures an electrical resistance of the photocatalyst, the catalyst sensor disposed at the conditioner.
Kobata et al. disclose a similar substrate processing apparatus comprises a catalyst sensor (Fig. 21, 60-10) for measuring an activity degree (i.e. status) of a catalyst, and wherein the catalyst sensor measures an electrical resistance of the catalyst, wherein the catalyst sensor is disposed at a conditioner (60), for the purpose of allowing a the conditioner to acquire appropriate catalytic status with a minim conditioning amount (see, e.g., paras. 281 and 284-285).
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, the catalyst sensor measures an electrical resistance of the catalyst, wherein the catalyst sensor is disposed at the conditioner in order to, inter alia, allow the conditioner to acquire appropriate catalytic status with a minimum conditioning amount as taught by Kobata et al.
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) 14 and 15 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, 10 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, 10 and 13-15 and the prior art 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. New prior art has been applied to provide a more straightforward prior art rejection
Regarding 112a rejection of 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”, the rejection has been withdrawn based on Applicant’s remarks referring to the original figures. However, as addressed above, this is not considered a feature of the claimed invention as the substrate is not a structural feature of claimed apparatus. The feature relates to intended use and has been addressed accordingly in the prior art rejections.
Regarding 112a rejection of 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” (emphasis added), this rejection is maintained as there is no support in the original disclosure for its inclusion in the claim language even if, as Applicant argues, it may be how Applicant intended to use the claimed and disclosed apparatus or would have found it obvious to use the claimed and disclosed apparatus. These ideas are not the threshold for adding features to the claims not specifically addressed in the original disclosure.
Regarding the 112b rejection attempting to relate and therefore tie the claimed invention to a substrate that might be processed in the apparatus and its size, as far as Examiner understands Applicant’s remarks at this time, Applicant’s appears to be arguing the recitation is an intended use of the claimed apparatus. Examiner accepts this characterization and withdraws the rejection based on Applicant’s argument and interpretation. Note: at this time, the language at issue has been considered drawn to an intended use of the claim invention and has been treated as such. However, if Applicant’s arguments were to shift in a way that either changed this finding or disputed this finding, a 112b rejection would likely be reapplied and included in a final rejection if applicable.
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.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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