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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5 January 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer (TD) filed on 4 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,227,773 has been reviewed and is NOT accepted.
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b). Applicant is advised to please file a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, or file a TD that is signed by applicant. No new fee is required.
Election/Restrictions
Applicant’s election without traverse of Species 2 (corresponding to Fig. 7 and claims 24-27, 32, 36-43) was previously acknowledged.
Claims 28-29, 30-31 and 33-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the aforementioned reply.
Drawings
The corrected drawings were received on 13 June 2025. These drawings are acceptable.
Response to Arguments
Claims 1-26, 36-38 and 43 are cancelled.
Applicant’s amendments and accompanying arguments, filed 5 January 2026, with respect to claims have been fully considered and are persuasive. The rejections based on 35 USC 112 and prior art rejections of claims 27, 32, and 39-42 have been withdrawn. Double patenting rejections remain. See above with respect to TD. A prior art rejection of claim 39 is provided below. Additionally, clarification and/or correction of claim 41 is requested as set forth below.
Claim Rejections - 35 USC § 112
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 41-42 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.
Claim 41 recites a comparison based “a difference” between positive voltages applied to the first electrode and the second electrode and the negative voltage applied to the electrode during the plasma generation period and voltages applied to the first electrode and the second electrode during the idle period. In order to expedite examination, Examiner has assumed the claim was meant to each of the respective differences (for the first electrode and the second electrode), rather a sum difference, although the claim is not clear regarding this feature. 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.
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, 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.
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) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP Pub. No. 2001085398 to Ishibashi et al. in view of U.S. Patent No. 6,243,251 to Kanno et al. and U.S. Patent Pub. No. 2018/0040459 to Iwase et al.
Regarding claim 39: In Figs. 1-2, 4 and 6, Ishibashi et al. disclose a plasma processing apparatus substantially as claimed and comprising: a chamber (Fig. 1, 5); a gas plate (3) disposed in the chamber; an electrode (1) disposed below the gas plate and in contact (e.g., electrostatic contact) with a lower surface of the gas plate; a substrate support (2) disposed in a lower portion of the chamber and configured to support a substrate in the chamber; an electrostatic chuck (6) that is disposed in an upper portion of the chamber, is opposed to the substrate support, is configured to attract the electrode to the gas plate, and includes and; an upper electrode (multiple structures) disposed in an upper portion of the chamber includes a first electrode (6a) and a second electrode (6b); and a plasma generator (107) configured to generate a plasma.
However, Ishibashi et al. fail to explicitly disclose the first electrode of the electrostatic chuck is disposed at a central portion of the electrostatic chuck and the second electrode of the electrostatic chuck surrounds a circumference of the first electrostatic electrode.
Kanno et al. disclose a first electrostatic electrode (11) disposed at a central portion of an electrostatic chuck (10) and a second electrostatic electrode (12) surrounding the circumference of the first electrostatic electrode for the purpose of equally applying a processing condition to an entire substrate (see, e.g., Fig. 1 and 9a-b, abstract and column 15, row 32 through column 16, row 11).
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 Ishibashi et al. the first electrode of the electrostatic chuck disposed at a central portion of an electrostatic chuck and the second electrode of the electrostatic chuck surrounding the circumference of the first electrostatic electrode in order to equally apply a processing condition to an entire substrate as taught by Kanno et al.
Ishibashi et al. further fail to disclose a controller configured to control the voltages applied to the first electrode and the second electrode, wherein the controller is configured to cause applying voltages having polarities different from each other to the first electrode and the second electrode of the electrostatic chuck during an idle period in which no plasma is generated, and wherein the controller is configured to apply voltages having the same polarity to the first electrode during a plasma generation period in which plasma is generated.
Iwase et al. teach providing an electrostatic chuck with a first electrode/first power supply (Figs. 1-3, 120 and 116) and a second electrode/second power supply (119 and 117) in combination with controller (118) configured to control the voltages applied to the first power supply and the second power supply , wherein the controller performs a control to apply voltages having polarities different from each other to the first electrode and the second electrode of the electrostatic chuck during at least an idle period in which no plasma is generated among a plasma generation period in which plasma is generated and an idle period. The configuration is provided for the purpose of suppressing foreign particle adhesion to the article being electrostatically held (see, e.g., paras. 12-14, 22, 28, 33-38 and 45-46).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided the plasma processing apparatus of modified Ishibashi et al., having a first electrode/first power supply and a second electrode/second power supply in combination with a controller configured to control the voltages applied to the first power supply and the second power supply, wherein the controller performs a control to apply voltages having polarities different from each other to the first electrode and the second electrode of the electrostatic chuck during at least an idle period in which no plasma is generated among a plasma generation period in which plasma is generated and an idle period in order to suppress foreign particle adhesion to the electrode being electrostatically held by the electrostatic chuck as taught by Iwase et al.
Regarding applying voltages having the same polarity to the first electrode and the second electrode during a plasma generation period, Moriguchi teach in an electrostatic chuck having a first electrode and a second electrode voltages applied to the first electrode and the second electrode may have the same polarity or differ polarities during a plasma generation period for the purpose of inhibiting particles from being generated at the surface of a substrate being processed during the plasma generation period that are unique to the plasma generated during the plasma generation period (see, e.g., paras. 11, 76-85).
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 modified Ishibashi et al. the controller configured to apply voltages having the same polarity to the first electrode and the second electrode during a plasma generation period in which plasma is generated in order to inhibit particles from being generated at the surface of a substrate being processed during the plasma generation period that are unique to the plasma generated during the plasma generation period as taught by Moriguchi.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 27, 32, 39-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,227,773 in view of JP Pub. No. 2001085398 to Ishibashi et al. in view of U.S. Patent Pub. No. 2018/0040459 to Iwase et al. and Kanno et al.
Ishibashi et al. and Iwase et al. disclose all additional structural and method features not explicitly recited in the claims of ‘773, in particular the necessary power supplies and a controller. Kanno et al. discloses the claimed first electrode and second electrode arrangement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USP Pubs. 2003/0032301 and 2003/0047282 disclose relevant features of electrostatic chucks.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716