DETAILED ACTION
Applicant’s Response
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 22, 2026, has been entered.
Claims 1, 17, and 20 are amended; claim 24 is new.
The applicant contends:
(1) Regarding the outstanding 112(a) rejections, the Office previously rejected the term “elevating mechanism” on the grounds that mechanism is a nonce term that the specification does not adequately define. Applicant then substituted the term “elevating drive,” which was also rejected under 112(a), and now presents the term “drive,” as in a “drive configured to raise and lower the third support arm.” This term is well-understood in the mechanical arts as denoting a component that generates and transmits a motive force (p. 12).
(2) The cited prior art does not disclose the new material presently recited by claim 1 – namely, the feature of a “lock mechanism configured to switch between a connected state…and a disconnected state” (pp. 13-17).
In response,
(1) To summarize the evolving grounds of rejection pertaining to this particular limitation: The original term, “elevating mechanism,” was interpreted as a generic placeholder whose structure is to be defined by Applicant’s specification. Because the specification did not clarify the structure corresponding to “elevating mechanism,” the term was rejected as new matter.
Subsequently, Applicant substituted “drive” for “mechanism,” reasoning that the former is a specific, non-generic term whose structure is apprehensible to one of ordinary skill. But this characterization straightforwardly implies that “drive” is not commensurate in scope with “mechanism” and is, in fact, narrower. Of course, it is improper to narrow the scope of the claim by reciting a term or feature unsupported by the original disclosure, and the term “drive” does not appear in the original disclosure. Regardless of whether “drive” is preceded by an adverb, the term narrows the scope of the claim set in way that the specification does not contemplate, i.e., Applicant’s disclosure describes a “mechanism” for performing the recited function, not a “drive.” And because “drive” is not commensurate with “mechanism,” substituting the former for the latter constitutes new matter.
On the other hand, if it is asserted that “drive” is proportionate in scope to “mechanism,” then the former is as much of a generic placeholder as the latter, and the term remains undefined under 112(f) for the same reasons elaborated above.
The examiner suggests simply reciting the function without attribution to a particular structure. For instance, rather than stipulating that the “drive” raises and lowers the third support arm, just recite the function itself, e.g., a third weight measuring unit including a vertically movable third support arm…
(2) As an initial matter, the examiner observes that the critical limitation reciting the nexus of the third support arm, the drive, and the lock mechanism is confounded by the fact that the latter two terms remain structurally undefined, as detailed below by the 112 rejections. Even so, Sada provides a drive (82) to raise and lower the support arm (80) comprising the plurality of pins (62), whereby this drive is necessarily controlled by an operator (Fig. 3). As detailed in the rejection below, the composite prior art apparatus contains a sensor to measure the weight applied to theses pins by the substrate, as described by the teachings of both Chen and KR. It can now be seen that the claimed “connected state” is simply one in which the operator controls the drive to maintain the support arm in a stationary horizontal position by applying the necessary force to counteract gravity, as well as the weights of the arm and substrate. Simply removing this counteracting force is analogous to the claimed “disconnected state,” where the arm would lower in view of the substrate’s weight. In other words, the claimed “connected” and “disconnected” states are simply modes of controlling Sada’s drive as regulated by the operator of the apparatus, but it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). It is in this way that the composite prior art apparatus satisfies the new material – the operator can simply apply and restrict the drive’s actuating force through an intended act of use, whereby these two acts respectively correspond to the claimed connected and disconnected states.
Lastly, regarding the addition of claim 24, the examiner appreciates Applicant’s attempt to further clarify the structure of the lot forming unit but suggests directing these efforts toward claim 1 to obviate an outcome in which two distinct inventions are recited in the same claim set.
Restriction
Newly submitted claim 24 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions of claims 1 and 24 each recite mutually exclusive content. For example, claim 1 specifies the feature of a third weight measuring unit comprising a lock mechanism, whereas claim 24 specifies a pitch conversion unit comprising fixed and movable hands. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 24 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
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) because the claim limitations use a generic placeholder – “mechanism,” in this case – 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 limitations are:
The “lock mechanism” of claim 1.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Although paragraphs [0044-46] of the specification address the feature of the lock mechanism (348), its structural content is not defined, thereby prompting 112(b) rejections.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (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 them being interpreted under 35 U.S.C. 112(f).
Claim Objections
Claim 1 is objected to because the penultimate line of the penultimate paragraph reads, “the lock mechanism is in the disconnected [sic], the third support arm…” The examiner believes the term state ought to be inserted after “disconnected.”
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claim 1 and its dependents are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Claim 1 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 at the time the application was filed had possession of the claimed invention. The penultimate paragraph of claim 1 has been amended to recite a “drive configured to raise and lower the third support arm,” but the original disclosure lacks support for this language. Specifically, the term “drive” is new matter. Although paragraph [0045] invokes an “elevating mechanism” which has a “driving force,” the former is a nonce term and the latter is the functional effect of using the former. Because the driving force is a functional outcome, it cannot substitute as a structural definition to thereby yield the novel term of “drive.” Nevertheless, to advance prosecution, the claim will be examined as written until the matter’s resolution.
According to a second grounds, claim 1 and its dependents are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Claim 1 has been amended to recite a “lock mechanism configured to switch,” which is being treated as a generic placeholder under 112(f). However, all recitations of “lock mechanism” in the specification fail to identify a specific structure for performing the attendant function. Without disclosure of any structure, materials, or acts for performing the attendant function, one cannot conclude the inventor was in possession of the claimed invention.
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.
Claim 1 and its dependents are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 1 has been amended to recite a “lock mechanism configured to switch,” which is being treated as a generic placeholder under 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function. Because “lock mechanism” lacks a specific structural definition, its scope is indefinite. For this reason, the claim is indefinite and rejected under 112(b). To advance prosecution, the examiner will accept the prior art disclose of means capable of switching between connected and disconnected states as satisfying the contested limitation.
Separately, the full function of the aforementioned lock mechanism is to “switch between a connected state in which the drive and the third support arm are connected and a disconnected state in which the drive and the third support arm are disconnected.” As noted, above, under the 112(a) rejections, the feature of the “drive” is new matter deriving from the original nonce term, “elevating mechanism.” Previously, “elevating mechanism” was rejected under 112 because the specification did not identify a corresponding structure, meaning that its configuration is unknown. Necessarily, then, the configuration of the “drive” is also unknown. In light of this observation, the claimed “connection” between the drive and third support arm become indefinite, because the underlying structure of the drive is unknown, rendering it impossible to determine status of the claimed connection. Correction is required. To advance prosecution, the examiner will accept the prior art disclosure of any connecting means between support arm and guide.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-5, 7-8, 10-14, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Onzuka et al., US 2018/0166310, in view of Lee et al., US 2017/0345688, Lee, KR 10-1586940, hereafter “KR,” where machine translation is relied upon, Chen et al., US 2004/0225399, and Sada, US 6,129,546.
Claims 1, 11: Onzuka discloses a substrate processing apparatus (Fig. 2), comprising:
A cassette block (2) configured to mount a cassette, including:
A mounting stage (5) on which the cassette is mounted [0025];
A first transfer unit (12) including a first arm;
A processing block (7) configured to process the substrate, including:
A processing module comprising a rinsing tank (32) that removes a part of a substrate [0043, 0045];
A second transfer unit (22) including a second arm [0041];
A relay block (3) configured to relay the substrate between the cassette and processing blocks, comprising:
An aligner (70), constituted as a spin chuck (71), that adjusts a position of a notch of the substrate [0031, 0035];
A controller (40) including a CPU for regulating the mechanisms constituting the processing apparatus [0049].
Onzuka is silent regarding the operation of weight measurement generally; therefore, the reference is necessarily silent regarding the specific mechanisms of the first through third weight measuring units. Claim 1 defines the first weight measuring unit as comprising a first support arm for handling substrates prior to processing by the processing block and the second weight measuring unit as comprising a second support arm for handling substrates subsequent processing. It should be observed, then, that Onzuka provides, within the relay block, a first support arm (21a) for handling pre-processed wafers and a second support arm (21b) for handling post-processed wafers ([0039-40]; Figs. 5-6).
Concerning the matter of weight measurement, Lee describes a semiconductor apparatus comprising a liquid processing block (280), a cassette block (10), and a relay block (220) configured to transfer the substrates therebetween ([0039]; Fig. 1). In order to determine if the resultant mass is within the appropriate specification, the substrates are weighed before and after processing within the relay block [0016]. Given that Onzuka’s liquid processing method similarly intends to alter the mass of the substrate by a specified amount, it would have been obvious to integrate the technique of pre- and post-process weighing to determine the adequacy of the operation and initiate corrective steps if necessary. As noted, the examiner understands Lee’s relay block (220) to be homologous to Onzuka’s relay block (3). And following Lee’s nomination of the relay block as an apposite site for the weight sensor, it would have been further obvious to execute weighing within this portion of Onzuka’s apparatus.
Continuing, KR discloses a batch etching apparatus comprising a first support arm (212) mounted on a first weight sensor (213) and a second support arm (312) mounted on a second weight sensor (313). As shown by Figure 1, the first support arm (212) handles pre-processed substrates, and the second support arm (312) handles post-processed substrates. This organization permits KR to assess the substrate’s pre-process and post-process weight to determine the removal amount of the etching process. Onzuka’s relay block, as previously disclosed, comprises a first support arm (21a) for handling pre-processed substrates and a second support arm (21b) for handling post-processed substrates, and the Office considers these respective arms to be analogous to KR’s first and second support arms (Figs. 5-6). Coupled with Lee’s suggestion to execute substrate weighing within the relay block, it would have been obvious to incorporate first and second weight sensors within Onzuka’s corresponding first and second support arms to achieve the predictable result of determining the removal amount of an etching sequence.
Onzuka’s spin chuck (71) does not include a support arm moveable along a guide, the arm does not contain “pins,” nor does the spin chuck comprise a third weight sensor, as claim 1 now requires. In supplementation, Chen discloses a substrate support chuck (31) in which a plurality of pins (32) selectively extend through the chuck’s upper surface to bear the substrate ([0043-44]; Fig. 3). The pins, in turn, are coupled to a sensor which permits the operator to weigh a given substrate before and after processing to determine the change in weight [0045]. Chen, though, does not disclose the mechanism for actuating the pins vertically. Sada is cited to address this omission, where the reference affixes the base of each lift pin (62) to a horizontal support arm (80) within the context of a substrate processing apparatus (Fig. 3). In addition, Sada couples the support arm to a guide formed within an elevating drive (84) that raises and lowers the lift pins (7, 27-34). It would have been obvious to incorporate a third weight sensor, as taught by Chen, within Onzuka’s aligner to achieve the predictable result of determining the change in substrate weight attributable to an act of processing. It would have been further obvious to provide a support arm which couples the lift pins to an elevating drive, as taught by Sada, to enable the vertical movement of said lift pins. Necessarily, the downward force induced by the weight of the support arm will act upon the incorporated weight sensor in a manner proportionate to the load.
Lastly, regarding the new material direct to “connected” and “disconnected” states, Sada provides a drive (82) to raise and lower the support arm (80) comprising the plurality of pins (62), whereby this drive is necessarily controlled by an operator (Fig. 3). The Office interprets the “connected state” as a mode in which the operator controls the drive to maintain the support arm in a stationary horizontal position by applying the necessary force to counteract the opposing forces of gravity, as well as the weights of the arm and substrate. Simply removing this counteracting force is analogous to the claimed “disconnected state,” where the arm would lower in view of the substrate’s weight. In other words, the claimed “connected” and “disconnected” states are simply modes of controlling Sada’s drive as regulated by the operator of the apparatus, but it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). It is in this way that the composite prior art apparatus satisfies the new material – the operator can simply apply and restrict the drive’s actuating force through an intended act of use, whereby these two acts respectively correspond to the claimed connected and disconnected states.
Claim 3: Onzuka’s processing block (7) comprises a plurality of processing modules (31-36), each including a rinsing tank [0043]. The controller is capable of weighing the batch retrieved from each tank and then performing a comparison – a recitation concerning the manner in which a claimed apparatus is to be employed does not differentiate the apparatus from prior art satisfying the claimed structural limitations (Ex parte Masham 2, USPQ2D 1647). The controller circuitry responsible for this operation may be deemed the “inter-module difference determination circuit.”
Claim 4: Onzuka’s apparatus is capable of etching, peeling, and polishing – a recitation concerning the manner in which a claimed apparatus is to be employed does not differentiate the apparatus from prior art satisfying the claimed structural limitations (Ex parte Masham 2, USPQ2D 1647).
Claim 7: Onzuka’s apparatus is of the batch type [0020].
Claim 8: Onzuka’s apparatus is capable of holding wafers at normal and half pitches and converting therebetween [0040]. Further, the mere act of replicating the already disclosed weight measuring unit and embedding it within any mechanism bearing a substrate is within the scope of ordinary skill, as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Claims 10, 23: Onzuka’s rinsing tank (31) stores a processing liquid to immerse the substrates as a batch and includes a holder (37a) (Fig. 7-8). Regarding the weight sensor, the mere act of replicating the already disclosed weight measuring unit and embedding it within any mechanism bearing a substrate is within the scope of ordinary skill, as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Claim 12: The mere act of replicating the already disclosed weight measuring unit and embedding it within any mechanism bearing a substrate is within the scope of ordinary skill, as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Claim 13: Onzuka furnishes a drying chamber (8) to batch dry processed substrates [0048]. The chamber can be filled with any type of fluid, including a “processing liquid” – a recitation concerning the manner in which a claimed apparatus is to be employed does not differentiate the apparatus from prior art satisfying the claimed structural limitations (Ex parte Masham 2, USPQ2D 1647).
Continuing, the drying chamber (8) also includes a holder (25) [0048]. Regarding the weight sensor, the mere act of replicating the already disclosed weight measuring unit and embedding it within any mechanism bearing a substrate is within the scope of ordinary skill, as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Claim 14: The circuitry of the controller dedicated to weighing the substrates within the dryer may be deemed the “drying defect determination circuit.”
Claim 21: Although KR “calculates the total etching amount of the wafer from the measured quantity of the sensor,” the reference does not explicitly assert that the tare weight is determined beforehand. Nevertheless, one of ordinary is also one of ordinary discernment and, surely, would understand that the weight of the substrate holder must be calculated and subtracted from the gross weight to determine the net weight of the wafer as a matter of common sense. In other words, the concept of taring is a known technique that one of ordinary skill would have applied to the weight measuring unit of the composite prior art apparatus to determine the weight of the substrate specifically.
(KR’s understanding that the post-process substrate weight must be subtracted from the pre-process substrate weight to determine the removal amount already implies conceptual comprehension of taring. And given conceptual comprehension of taring, one would understand that the substrate’s holder must be subtracted from the gross weight to determine the substrate’s weight.)
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Onzuka in view of Lee, Chen, Sada, and KR, and in further view of Markle et al., US 6,790,376.
Claim 2: Lee does not suggest changing a processing condition in view of abnormal weight detection. Markle, however, discloses an etching process in which substrate weight is monitored to assess the status of material removal (9, 25-49). In the event that the removal amount is outside a permissible range, the controller adjusts a processing condition to compensate for the abnormality (9, 50-59). The physical circuit within the controller that is responsible for this adjustment may be deemed the “removal condition changing circuit.” It would have been obvious to adjust the parameters of a process proceeding outside specification in order to render the substrate operationally viable.
Claim 15: Markle, above, already addresses the feature of a controller capable of adjusting processing parameters. The precise circuit executing this adjustment may be deemed the “drying condition changing circuit.”
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Onzuka in view of Lee, Chen, Sada, and KR, and in further view of Jegal, US 2006/0112978.
Lee does not suggest embedding a weight sensor within a mounting stage or transfer unit. Jegal, though, provides an array of rinsing tanks (110) for performing batch substrate treatments ([0021]; Fig. 1). In order to assess the status of the substrates post-processing, Jegal embeds a weight sensor (50) within the support arm (30) of the transfer unit that conveys wafers to and from the processing tanks to weigh the substrates in comparison to a reference mass stored by a controller (34), whereby said controller determines whether the weight is within a permissible range [0026]. The examiner notes that Jegal’s support arm (30) is analogous to Onzuka’s second transfer unit, and it is the Office’s position that it would have been obvious to integrate a weight sensor within the arm of the second transfer unit to achieve the predictable result of immediately identifying weight discrepancies within the substrate batch.
Conclusion
The following prior art is made of record as being pertinent to Applicant’s disclosure, yet is not formally relied upon: Honda et al., US 2019/0371595. Honda teaches a substrate processing apparatus comprising a cassette block (2), a processing block (6), and a relay block (3) configured to relay the substrate between the cassette and processing blocks. Further, the system includes a controller (7), a mounting stage (10), and first (11) and second (19) transfer units, each including arms ([0024-30]; Fig. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN K FORD whose telephone number is (571)270-1880. The examiner can normally be reached on 11-7:30 PM. 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.
/N. K. F./
Examiner, Art Unit 1716
/KARLA A MOORE/ Primary Examiner, Art Unit 1716
Prosecution Insights