DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. This office action is responsive to applicant’s amendment filed on 11/03/2025. Claims 1-25 are pending. Claims 1, 14, 20 have been amended. Claims 7-13 are allowed by the examiner in previous office action. Claims 1-6 (previously withdrawn claims) are rejoined and fully examined by the examiner in view of the applicant’s amendment along with the remark. Claims 1-19 are allowed. Claims 20-25 are rejected as discussed below.
Response to Arguments
3. Regarding to claims to independent claims 1 and 14, the applicants stated:
“In the OA, claims 14-19 are rejected under 35 USC § 102(a) as being anticipated by US Patent No. 6,770,151 to Michael Ravkin et al ("Ravkin"). In response, withdrawn independent claim 1 is amended to recite "retracting the barriers to drain, from the substrate and the stage, a portion of the solvent into which the residue is moved," reflecting the allowed subject matter of claim 7. Because, withdrawn independent claim 1 recites the subject matter of allowed claim 7, Applicant respectfully submits that claim 1 (and its dependent claims) are eligible for rejoinder. According to MPEP § 821.02, "even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined." Accordingly, Applicant requests rejoinder of claims 1-6.
Independent claim 14 is amended similarly. Applicant respectfully submits that claim 14 is allowable for at least the same reasons as independent claim 7. Claims that depend from independent claim 14, as amended, are allowable for at least the same reasons.”
The applicant’s amendment along with the remark with respect to claims 1 and 14 were persuasive. Thus, the examiner allows claims 1, 14. Claims 2-5 are allowed because they directly or indirectly depend on allowed claim 1. Claims 15-19 are allowed because they directly or indirectly depend on allowed claim 14.
Regarding to claim 20, the applicants stated “With respect to possible 112 issues, Applicant respectfully submits that a person of ordinary skill in the art would understand that solvent being substantially absent at locations away from the corners and/or edges of the substrate would mean that an operative amount of solvent would be absent from portions of the substrate except at the corners and/or edges of the substrate. Under MPEP §2173.05(b), the "use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under 35 U.S.C. 112(b)." Therefore, Applicant respectfully submits that the use of "substantially" in claim 20, as amended, should not render the claim indefinite. Accordingly, Applicant submits that independent claim 20, as amended, is allowable as are its respective dependent claims.”
The examiner disagrees. First, the applicants do not have proper support for the new limitation “wherein the solvent is substantially absent at location away from the corners and/or edges of the substrate”. Second, the applicants never define that “solvent being substantially absent at locations away from the corners and/or edges of the substrate would mean that an operative amount of solvent would be absent from portions of the substrate except at the corners and/or edges of the substrate” anywhere the Specification as argued by applicants. Thus, the examiner provides new ground of rejection under 35 U.S.C 112(a) and 112(b) as discussed below.
Regarding to previous ground of rejection under 35 U.S.C 102(a)(1) and/or 102(a)(2) with respect to claims 20, 23-25, the applicant’s amendment was sufficient to overcome the 102(a)(1) and/or 102(a) rejection as being anticipated by Iwao (US 2019/0091733). However, upon further consideration, new ground of rejection under 35 U.S.C 103 was set forth as discussed below using additional new cited prior arts.
Election/Restrictions
4. Claim 1 is allowable. The restriction requirement between Species A and Species B, as set forth in the Office action mailed on 04/29/2025 , has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of species is withdrawn. Claims 1-6 are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
5. In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
6. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 20-25 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.
In line 11-12 of claim 20, the examiner is unable to find proper support for the new negative limitation “wherein the solvent is substantially absent at location away from the corners and/or edges of the substrate” (emphasis added). The examiner clearly recognizes that applicants discloses that “the position-controller spray nozzle 500 are aligned on the corners and/or edges of the substrate 100 at which the remaining portion 105B of the residue remains” in paragraph [0048] and as shown in Fig 5C. However, the applicants never explicitly disclose or recite “wherein the solvent is substantially absent at location away from the corners and/or edges of the substrate”. On the contrary, in the same embodiment, paragraph [0047] and Fig 5B, the applicants discloses that solvent (115E) is completely cover the whole bottom surface of the wafer. Further, the examiner interprets the term “absent” as a negative limitation. According to MPEP 2173.05(i), “Any negative limitation or exclusionary proviso must have basis in the original disclosure.”
Claims 21-25 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph because they directly or indirectly depend on rejected claim 20
9. 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.
10. Claims 20-25 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.
In line 9 of claim 20, the phrase “is performed primarily at corners and/or edges” (emphasis added) is subjective, vague and indefinite. It is unclear which part of the wafer that applicants considered as “primarily at corners and/or edges”
In line 11-12 of claim 20, the limitation “wherein the solvent is substantially absent at location away from the corners and/or edges of the substrate” (emphasis added) is subjective, vague and indefinite. It is unclear from the claim what specific amount of solvent that applicant considered as “the solvent is substantially absent at location away from the corners and/or edges of the substrate”.
Claims 21-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph because they directly or indirectly depend on indefinite claim 20.
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. Claims 20, 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Iwao (US 2019/0091733 A1) in view of Fujita (US 2018/0204745 A1).
As to claim 20, lwao discloses a method comprising:
placing a top surface of a substrate (W) on a stage (See Fig 7 step S1, Fig 8A; Note: the original top surface of the substrate (W) is on a stage after the substrate is flipped);
based on the top surface of the substrate being placed on the stage, performing a hydrophobic treatment on a bottom surface of the substrate on which a residue is formed; (Fig 7 step S6; Fig 8D; paragraph 0111-0114); and
forming a solvent on the bottom surface of the substrate on which the hydrophobic treatment is performed, so that the residue moves away from the bottom surface of the substrate into the solvent (Fig 7 step S7, paragraph 0116-0120).
Wherein the hydrophobic treatment is performed primarily at corners and/or edges of the substrate (paragraph 0111-0114).
As to claim 20, Iwao fails to disclose wherein the solvent is substantially absent at location away from the corners and/or edges of the substrate. Fujita teaches to forming a solvent at the edge of the wafer such that wherein the solvent is substantially absent at location away from the corners and/or edges of the substrate (abstract, paragraph 0004-0006, 0029-0043). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Iwao in view of Fujita by having the solvent is substantially absent at location away from the corners and/or edges of the substrate because it helps to focus cleaning the edge or peripheral of the substrate.
As to claim 23, lwao discloses spinning and rinsing the substrate and the stage to remove, from the bottom surface of the substrate, the solvent into which the residue is moved (See paragraph 0118-0120).
As to claim 24, lwao discloses the substate and the stage are spun at 10 to 1200 rotations per or minute (rpm) or several thousand rpm (See paragraph 0092, 0122; within applicant’s ranges of 1000 rotations per minute to about 5000 RPM).
As to claim 25, lwao discloses the substrate and the stage are rinsed by an organic solvent (Fig 8B-8C; paragraph 0049, 0057, 0071).
14. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over lwao (US 2019/0091733 A1) in view of Fujita (US 2018/0204745 A1)as applied to claims 20, 23-25 above, and further in view of Satsanarukkit (US 2014/0255270 A1).
As to claim 21, Iwao and Fujita fail to disclose the hydrophobic treatment comprises forming fluorine plasma or parylene coating. However, Iwao clearly discloses the hydrophobic treatment on the substrate. Satsanarukkit discloses hydrophobic treatment comprises forming parylene coating (paragraph 01078, 0151). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify lwao and Fujita in view of Satsanarukkit by having hydrophobic treatment comprises forming parylene coating because equivalent and substitution of one for the other would produce an expected result (See MPEP 2143(1)(B)).
Allowable Subject Matter
15. Claims 1-19 are allowed.
16. The following is a statement of reasons for the indication of allowable subject matter:
As to claims 1-6, the cited prior arts fail to disclose or suggest retracting the barriers to drain, from the substrate and the stage, a portion of the solvent into which the residue is moved in combination with all other limitation in the claim.
As to claims 7-13, the cited prior arts fail to disclose or suggest retracting the barriers to drain, from the substrate and the stage, a portion of the solvent into which the residue is moved in combination with all other limitation in the claim.
As to claims 14-19, the cited prior arts fail to disclose or suggest retracting the barriers to drain, from the substrate and the stage, a portion of the solvent into which the residue is moved in combination with all other limitation in the claim.
Conclusion
17. 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/ Primary Examiner, Art Unit 1713