Detailed Correspondence
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 .
Response to Amendment
Applicants’ submission, filed on 12/17/2025, addressing rejection of claims 1-14 and 21 from the non-final office action (06/18/2025), by amending claim 1 is entered and will be addressed below.
Election/Restrictions
Claims 15-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention Group II, there being no allowable generic or linking claim.
Claim Interpretation
The newly added limitation “a roll of porous substrate”, similar to the “a textile” of claim 2, the substrate used in the apparatus is not part of the apparatus.
The “a coating drum of the PVD apparatus is in communication with a heating device configured to raise a temperature of the coating drum to between 0°C and 10°C, and said coating drum is configured to increase a desorption rate of the substrate” of claim 1, the operation temperature and the purpose of the operation is not part of the apparatus. A drum that is capable of operating at this temperature range is considered read into the claim.
The “the vacuum chamber comprises a winding chamber configured to be pressurized at a first pressure, and a PVD chamber is configured to be pressurized to a second pressure that is different than the first pressure” of claim 3, the pressure in each chamber is an operation parameter and an intended use of the apparatus.
The “wherein the system is configured to pass the substrate between the unwinder and winder a plurality of times, while maintaining a vacuum in the vacuum chamber” of claim 11, the bold face portion is an intended use of the apparatus.
The previously added limitation “wherein the physical vapour deposition (PVD) apparatus is configured to apply an aluminium deposition to the substrate” of claim 21.
It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (Walter, 618 F.2d at 769, 205 USPQ at 409; MPEP 2106). Additionally, in apparatus claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim (In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963); MPEP2111.02). When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01).
The “wherein the unwinder is configured to operate as a rewinder” of claim 4 and “wherein the rewinder is configured to operate as an unwinder” of claim 5, this is considered as reversible direction of the winder and rewinder ([0020]).
The “a measuring roller” of claim 9 including various properties being measured by the roller or by a device in or near the roller, or the roller or substrate on it is being measured. This is considered a broad claim but not indefinite.
The “a thickness measurement unit” of claim 10 includes a thickness measurement unit anywhere in the system, on the substrate or not on the substrate. A thickness measurement unit on the roller reads into both claims 9 and 10.
The “further comprising a first feeder provided at the unwinder and a second feeder i-provided at the rewinder, each feeder being configured to retain a portion of the substrate to reverse the direction of treatment of the substrate” of claim 12, the unwinder and winder itself is a feeder of the substrate. It does not require a separate component. Note also the feeder is feeding the substrate, not feeding a material to be deposited or attached to the substrate.
The “a cooling system configured to capture degassed contaminants” of claim 13 can be a cooling system inside the vacuum chamber or downstream of the vacuum chamber.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 11-14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yan et al. (US 20200199742, hereafter ‘742), in view of TAKAHASHI et al. (JP 2861450, hereafter ‘450).
‘742 teaches some limitations of:
Claim 1: Double-Sided Vacuum Coating Device For Continuously Coating A Film Back And Forth (title, includes the claimed “A system for treating a substrate, the system comprising”);
The coating assembly 6 is selected from one of a group consisting of a resistance vaporizing apparatus, an intermediate frequency induction vaporizing crucible apparatus, a magnetron sputtering apparatus and an electron gun apparatus (Fig. 1, [0027], last sentence, includes the claimed “a physical vapour deposition (PVD) apparatus”);
The vacuum coating device includes a vacuum chamber 1 provided with an upper winding and unwinding mechanism 2, an upper delivery mechanism 3, a lower delivery mechanism 4 and a lower winding and unwinding mechanism 5 therein … The vacuum coating device is configured that a film to be coated can start from the upper winding and unwinding mechanism 2 and pass through the upper delivery mechanism 3 and the lower delivery mechanism 4 to the lower winding and unwinding mechanism 5, or start from the lower winding and unwinding mechanism 5 and pass through the lower delivery mechanism 4 and the upper delivery mechanism 3 to the upper winding and unwinding mechanism 2 ([0022], 2nd sentence, includes the claimed “an unwinder configured to receive and unwind a roll of porous substrate; a rewinder configured to rewind the substrate from the unwinder” and the claimed “a vacuum chamber in which the unwinder, PVD apparatus and rewinder are disposed”, note the type of substrate is an intended use of the apparatus, and the coating assembly is capable of processing a porous substrate).
‘742 does not teach the other limitations of:
Claim 1: wherein a coating drum of the PVD apparatus is in communication with a heating device configured to raise a temperature of the coating drum to between 0°C and 10°C, and said coating drum is configured to increase a desorption rate of the substrate.
Claim 13: further comprising a cooling system configured to capture degassed contaminants.
‘742 further teaches that the film starts from the upper winding and unwinding mechanism 2 and passes through the smoothing roller 315, the cooling drum 314, the smoothing roller 316, the transitional rollers 7, the smoothing roller 416, the cooling drum 414 and the smoothing roller 415 in sequence to the lower winding and unwinding mechanism 5. The cooling drum 314, 414 utilize coolant circulation to perform cooling, with a cooling temperature of −25° C (Fig. 2, [0029], 5th – 6th sentences). However, ‘742 is silent of the chamber temperature.
‘450 is analogous art in the field of Polymer films such as polyester, polyimide, etc. are formed by depositing Co, Ni, Fe or an alloy containing them as a main component in a vacuum such as a vacuum evaporation method ([0002]), The non-magnetic substrate 0a is wound around a feeding roller 21, and is fed with controlled tension. Reference numerals 22 and 24 denote pass rollers, which rotate in contact with the magnetic recording medium 20 on which the nonmagnetic substrate 20a magnetic layer and the protective film 4 are formed. Reference numeral 23 denotes a main roller (page 3, 2nd last paragraph). ’450 teaches that the temperature of the cryogenic panel 27 is set to −50. C (top of page 5), when electricity is supplied to a halogen lamp, a heater, or the like constituting the heating device 26, the light is condensed by the reflector and irradiates the surface of the non-magnetic substrate 20a to increase the surface temperature (middle of page 4, a heating device capable of raising the temperature of the coating drum), the output of the heating device is set so that the temperature of the surface of the nonmagnetic substrate 20a becomes 80 ° C (top of page 5), Since the released outgas is adsorbed by the cryogenic panel, the moisture in the outgas hardly adheres to the ferromagnetic metal thin film immediately after the formation ([0007]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have adopted a cryopanel and a heater of ‘450, to the coating apparatus of ‘742, for the purpose of desorbing moisture from the substrate during degassing when forming magnetic coating, as taught by ‘450 ([0007]). Note the imported heater is capable of “to raise a temperature of the coating drum to between 0°C and 10°C” as it has the capability of raising the temperature to raising to 80° C.
‘742 further teaches the limitations of:
Claims 2, 4-5, and 11-12: A particular device is necessary for coating an extremely thin film with a relatively thicker metallic conductive layer to meet requirements for flexible electric conduction and shielding material. The so-called “extremely thin film” has a thickness of 2-12 μm, and is made of … polyester cloth ([0003]), The vacuum coating device is configured that a film to be coated can start from the upper winding and unwinding mechanism 2 and pass through the upper delivery mechanism 3 and the lower delivery mechanism 4 to the lower winding and unwinding mechanism 5, or start from the lower winding and unwinding mechanism 5 and pass through the lower delivery mechanism 4 and the upper delivery mechanism 3 to the upper winding and unwinding mechanism 2 ([0022], 2nd last sentence, includes the claimed “wherein in a first mode: the unwinder is configured to unwind a textile and the rewinder is configured to wind the textile, and in a second mode: the rewinder is configured to unwind the textile, and the unwinder is configured to wind the textile” of claim 2, “wherein the unwinder is configured to operate as a rewinder” of claim 4, “wherein the rewinder is configured to operate as an unwinder” of claim 5, “wherein the system is configured to pass the substrate between the unwinder and winder a plurality of times, while maintaining a vacuum in the vacuum chamber” of claim 11, and “further comprising a first feeder provided at the unwinder and a second feeder provided at the rewinder, each feeder being configured to retain a portion of the substrate to reverse the direction of treatment of the substrate” of claim 12, see also claim interpretation above for “feeder”).
Claims 3 and 8: The coating assembly 6 is selected from one of a group consisting of a resistance vaporizing apparatus, an intermediate frequency induction vaporizing crucible apparatus, a magnetron sputtering apparatus and an electron gun apparatus ([0027], these physical vapor sources has to be operated at a higher pressure than the vacuum chamber so that the vapor can flow from the source to the substrate, includes the claimed “wherein the vacuum chamber comprises a winding chamber configured to be pressurized at a first pressure, and a PVD chamber is configured to be pressurized to a second pressure that is different than the first pressure” of claim 3 and “wherein the system is configured to at least partly degas the substrate by exposing the substrate to a heated boat of the PVD apparatus” of claim 8, note this is also taught by ‘450).
Claim 6: The vacuum coating device further includes a plasma-source cleaning unit 8 provided beside the film to be coated for cleaning the film ([0027], 2nd sentence, includes the claimed “wherein system comprises at least one plasma treatment module positioned configured to generate a plasma”).
Claim 7: The cooling drum 314, 414 utilize coolant circulation to perform cooling, with a cooling temperature of −25° C ([0029], 6th sentence, coolant circulation is “wherein the temperature of the drum is dynamically adjustable” at least between −25° C and room temperature, this is also taught by ‘450 by radiation heater 7).
Claim 14: the pump system connected to the vacuum chamber is considered the claimed “further comprising a vacuum storage configured to store at least a portion of the vacuum from the vacuum chamber”.
Claim 21: The so-called “relatively thicker metallic conductive layer” has a thickness of 200-2000 nm, and is made of conductive and shielding materials such as … aluminum ([0003], includes the claimed “wherein the physical vapour deposition (PVD) apparatus is configured to apply an aluminium deposition to the substrate”, note this is an intended use of the apparatus).
Alternatively, claims 1-8, 11-14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over ‘742, in view of ‘450 and Lyons et al. (US 6045864, hereafter ‘864).
Applicants argue various intended use of various claimed terms. In case Applicants argue that “a textile” of claim 2 and “a roll of porous substrate” of claim 1 are not an intended use of the apparatus.
‘846 is analogous art in the field of Vapor Coating Method (title), vaporization of substantially all of the atomized fluid composition occurs so as to form a vapor having a condensation temperature (abstract), FIG. 3 shows one specific embodiment of an apparatus 200 of the present invention useful for forming a coating (not shown for purposes of clarity) on a flexible web 204 that moves across chilled support member 206 from supply roll 208 to take-up roll 210 (col. 15, lines 60-64). ’864 teaches that Flexible web 204 may be formed from a variety of flexible materials including polymers, paper, fibrous material and cloth formed from natural and/or synthetic fibers (col. 16, lines 1-4).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have applied the vacuum coating device of ‘742 to cloth, as taught by ‘864, for its suitability with predictable results. The selection of something based on its known suitability for its intended use has been held to support a prima facie case of obviousness. MPEP 2144.07.
Claims 3-8, 11-14, and 21 rejection are discussed above.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over ‘742 and ‘450 (optionally with ‘864), as being applied to claim 1 rejection above, further in view of Kim et al. (US 20110300290, hereafter ‘290).
The combination of ‘742 and ‘450 (optionally with ‘864) does not teach the limitations of:
Claim 9: wherein the system further comprises a measuring roller.
Claim 10: wherein the system further comprises a thickness measurement unit.
‘290 is an analogous art in the field of Device For Fabricating Electrode By Roll To Roll Process (TITLE), including an evaporation unit (abstract). ‘290 teaches that The lithium thin film forming device 1 may include a measuring unit 350 measuring a deposited amount of lithium. Actually, an amount required to perform the lithium doping is very small. Therefore, in order control the deposited amount of lithium, the lithium thin film forming device 1 may further include the measuring unit 350 measures the deposited amount of lithium and a controller (not shown) controlling the deposited amount of lithium according to the measured deposited amount ([0042], Fig. 1 shows the measurement is aiming at the web on the film forming roll 320).
Before the effective filing dates of the claimed invention, it would have been obvious to a person having ordinary skill in the art to have added a measuring unit 350 of ‘290 facing the delivery mechanisms/drums 3 and 4 of ‘742, for the purpose of controlling the deposited amount, as taught by ‘290 ([0042]).
Alternatively, claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over ‘742 and ‘450 (optionally with ‘864), as being applied to claim 1 rejection above, in view of Katsir et al. (US 20090229998, hereafter ‘998).
The combination of ‘742 and ‘450 (optionally with ‘864) does not teach the limitations of:
Claim 13: further comprising a cooling system for capturing degassed contaminants.
‘998 is an analogous art in the field of the thin-layer laminate of the invention, reference to vacuum deposition of substances on a substrate and similar expressions, includes deposition either on one side of a substrate, and, where the context allows (such as in the case of a foil substrate) deposition either on one side cryogenic temperatures, which comprises a metal support (e.g. an Al strip) a composition able to absorb hydrogen, adherent to at least one surface of the support ([0009]), The entire contents of all of the US patents mentioned hereinabove are incorporated by reference herein ([0055]).
Before the effective filing dates of the claimed invention, it would have been obvious to a person having ordinary skill in the art to have added a cryogenic device for the removal of hydrogen of ‘998 to the vacuum chamber 1 of ‘742, for the purpose of removing hydrogen contaminant, as taught by ‘998 ([0009] and abstract).
Alternatively, claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over ‘742 and ‘450 (optionally with ‘864), as being applied to claim 1 rejection above, in view of Brody et al. (US 20050031783, hereafter ‘783).
In case Applicants argue that a vacuum storage cannot be not part of the pump system in claim 14 and the two pressures in claim 3 has to be two chambers with separate pressure control.
‘783 is an analogous art in the field of the vapor deposition (abstract), substrate 312 will be described as being a continuous flexible sheet, which is initially disposed on a dispensing reel 314 that dispenses substrate 312 into the first deposition vacuum vessel 214. However, production system 300 can be configured to continuously process a plurality of individual substrates 312. Dispensing reel 314 is positioned in a preload vacuum vessel, which is connected to a source of vacuum (not shown) used for establishing a suitable vacuum therein (Fig. 2, [0046]). ‘783 teaches that each portion of substrate 312 exiting the final deposition vacuum vessel 214 in the series is received on a take-up reel 316 which is positioned in a storage vacuum vessel ([0047], note Fig. 2 shows the storage vacuum vessel is larger than the deposition vacuum vessel 214n, same as Applicants vacuum storage, [00114]).
Before the effective filing dates of the claimed invention, it would have been obvious to a person having ordinary skill in the art to have rearranged one of the upper winding and unwinding mechanism 2 and the lower winding and unwinding mechanism 5 of ‘742 to a storage vacuum vessel, as taught by ‘783. It has been held that rearranging parts of an invention only involves routine skill in the art. MPEP 2144.04 VI C.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
In regarding to 35 USC 103 rejection over Yan ‘472 in view of Takahasi ‘450, Applicants argue that
A) In ‘450, the temperature of 80o C refers to the temperature of the substrate, not the temperature of the drum, and is direct teaching away from ‘450 because roller 23 is insulated, see the top of page 7. And there is no motivation to heating between 0°C and 10°C and this is a clear and distinct range which is not taught, see page 8.
This argument is found not persuasive.
The substrate 20 is in direct contact with the main roller. The main roller is clearly capable of being heated to between 0°C and 10°C, particularly when turning off the cryogenic panel 27.
Therefore, the heating device is capable of heating the substrate (and the drum) to a temperature between 0°C and 10°C.
Even if ‘450 does not state that, it is clearly the cooling drum is capable of raising temperature to between 0°C and 10°C simply by exposing to room temperature.
The roller being insulated from the main body, it is referring to the chamber wall which is usually at room temperature. If Applicants argue that the main body include the substrate 20, then the roller 23 is also insulated from the cryogenic panel, isn’t it contradictory to the use of cryogenic panel. Actually, nowhere in ‘450 teaches away or discredits or criticizes from raising the temperature of the roller 23 to between 0°C and 10°C.
The apparatus that is capable of operating at the specified temperature read into the claim. This is not a method claim that requires the operation at specified temperature. Please read the claim interpretation section on intended use of the apparatus.
B) Applicants assert that only radiation is important in vacuum, see the top of page 9.
This argument is found not persuasive.
The examiner requested applicants to clarify their confusing statement regarding why temperature effect is of no importance and pressure effect is important in the previous reply to remarks, then get a statement make it more confusing now.
Why the apparatus cannot be operated at different degree of vacuum, even just slight below atmospheric pressure where convection is important? Why is only radiation being important and thermal conduction is not? Is the roller suspended by magnetic field with no contact for thermal conduction?
C) Applicants assert that there are advantage to the use of cooling drum by citing [0014] and [0015] and [0047], see the bottom of page 9.
This argument is found not persuasive.
None of these paragraphs are a description of the advantage of the cooling drum. For example, degas a porous substrate is not because of cooling/refrigeration, actually, cooling encourage condensation, make it more difficult to degas.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20100196624 is cited for coating textile ([0278]).
JP 2002173773 is cited for cryopanel 6 and IR heater 11 (Fig. 1).
US 20010008209 is cited for cryogenic panel in the film forming chamber to discharge moisture (abstract). The examiner also notices four references cited in PCT report in IDS are marked as “X” references.
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 KEATH T CHEN whose telephone number is (571)270-1870. The examiner can normally be reached 8:30am-5:00 pm.
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/KEATH T CHEN/Primary Examiner, Art Unit 1716