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 .
The Applicant’s amendment filed on January 19, 2026 was received. Claims 1-2, 4-5, 7-8 and 10 were amended and claim 11 was newly added.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued March 7, 2025.
Election/Restrictions
Newly submitted claim 11 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 11 and claim 1 are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination of claim 11 has separate utility such as for a non-rotary and/or non-vacuum film forming chamber. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). 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.
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 Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention.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 Rejections - 35 USC § 112
Claims 1-2, 4-5, 7-8 and 10 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. Claim 1 was amended with several new limitations that have no basis in the disclosure as filed. Firstly, nothing in the specification in any way describes or suggests a recipe screen that presents a sequence of steps for a recipe as being part of the display. Figure 7 shows a recipe table but nothing in the specification suggests that this table is in any way part of the display of the apparatus, and rather it is simply discussed as being an example of a recipe which can be performed by the instant apparatus. Furthermore, nothing in the specification suggests that this non-existent recipe screen is configured to do anything, let along refer to the step-specific table selected for the respective step and present the first parameter stored in the selected step-specific table.
Second, nothing in the specification suggests a second display component that presents a plurality of items corresponding to the wafer stage. In fact, nothing about the setting screen parameters seems to be at all tied to the wafer stage and instead appears more to refer to the properties of the rotation table, and as such this limitation is both clearly new matter and also extremely unclear.
Further, the term “step-specific table” has no basis in the specification and is not defined in the claim as being related to any of the specific “tables” shown in the figures or discussed in the specification, and is therefore also new matter, as well as extremely indefinite. Claim 1 previously defines “a rotation table” but this “step-specific table” is said to “store” the first parameter in claim 1 as now amended, and therefore would seem to be suggesting it is a data table rather than a physical table, but the specification uses the term “table” throughout this discussion as seemingly referring to the physical rotation table. Therefore, because this “step-specific table” is not defined at all by the claims or specification it is new matter, and as discussed above also extremely indefinite.
Claims 1-2, 4-5, 7-8 and 10 are also 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.
As discussed above, the new limitations regarding the “step-specific table” and the second display component “configured to present, for the stage” are extremely indefinite limitations which render the claim borderline incomprehensible. There is no way to understand what specific requirements are being listed in claim 1 when the terms are so poorly defined by both the claims and the specification. This is especially problematic when terms like “table” are being used interchangeably to refer to a physical rotation table and a digital data table. Applicant is encouraged to try to use different language to refer to the rotation table and digital data table in the future to avoid indefiniteness issues.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as unpatentable over Kato et al. (US 2016/0122872) in view of Ito et al. (US 2014/0109833) on claims 1-2, 4-5, 7-8 and 10 are maintained. The rejections are restated below.
Regarding claim 1: Kato et al. discloses a film forming apparatus having a rotary table (2) disposed in a vacuum chamber (11) and configured to rotate around a center shaft (21) which extends vertically from the center of the table (2) surface, thereby revolving a number of wafers (w) which are arranged in recess portions (25) of wafer holders (24) which are stages, the wafer holders (24) each provided with rotation shafts (26) and rotation driving parts (27) to drive rotation of the corresponding holder (24) in a separate central axis to that of the table (2), thereby rotating the wafer (W) in its recess portion (25), the apparatus further including a number of gas nozzles (51-55) configured to supply a number of different gasses into the vacuum chamber (11), and a control part (100) that includes a display part (105) that displays various settings on a screen, including parameters related to controlling the rotation speed of the table (2) and the wafer holder (24), where the control part (100) includes recipes and means to actuate the recipes such that a desired process is performed (pars. 35-37, 40-42, 48, 55-65, figures 1-2 and 4-5). The recipe data includes information such as target thickness, gas flow rate and rotation speed and implicitly includes information about when to start and stop various processes such that it includes multiple process steps (i.e., starting and stopping) where parameters like speed are obviously different at a processing time and a stopping time (par. 56-57, 59-60).
Kato et al. fails to explicitly disclose the exact layout of the display screen, i.e. that it includes a table with parameters for each recipe step, and further fails to explicitly disclose that the controller rotation operates according to a type of substrate in addition to the recipe. However, Ito et al. discloses a similar substrate processing apparatus which has a display unit as part of an input unit (77), the input unit (77) being a computer display that shows a number of windows and screens with a number of recipe tables (86) that contain a list of parameters, as well as information relating to whether or not each particular wafer is a product wafer or a dummy wafer, which is another way of saying the type of substrate is part of the control operation (pars. 63-71, figure 6). Ito et al. further discloses that the input unit (77) includes a list of the wafer numbers and slot numbers which are numbers that are assigned to each wafer slot in the apparatus (par. 80, figure 15), and also a recipe setting button (80) which allows the user to edit a particular recipe, which requires a separate recipe editing screen or window (par. 76, figure 6), the recipe information then being set in the recipe table (86) on the main screen of the input unit (77) (par. 71, figure 6). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an input system similar to the one taught by Ito et al. for the display of Kato et al. because Ito et al. teaches that precisely controlling each part of the process recipe as well as identification of the slots, wafers and use of dummy wafers can help ensure reproducibility of the coating processes (pars. 5-7).
The combination of Kato et al. and Ito et al. effectively performs the same process as the instant claims, despite not specifically using terms like “step-specific table storing a first parameter”. Regardless, the majority of these limitations are controller-specific limitations which do not necessarily impart patentability to apparatus claims. Claim 1 is drawn to a film-forming apparatus, with a display “configured to present a plurality of process-setting screens”. The combination of Kato et al. and Ito et al. does this- the exact content of each of the screens is merely an intended use limitation which any computer is capable of replicating, and as such does not further limit the “film forming apparatus” of claim 1. In apparatus claims, a claimed 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. MPEP § 2111.02.
Regarding claims 2 and 7: Kato et al. discloses that the apparatus uses at least the rotation speed of the table (2) and rotation speed of the holders (24) as two setting parameters (pars. 58-64).
Regarding claim 4: Kato et al. discloses that the apparatus uses at the rotation speed of the table (2) in addition to the rotation speed of the holders (24) as two setting parameters (pars. 58-64).
Regarding claim 5: Kato et al. discloses that the apparatus is controlled to supply gas to a gas supply area such that a wafer (W) passing through that area a plurality of times due to the revolution of the table (2) has a film formed thereon (par. 9).
Regarding claim 8: Kato et al. discloses that the apparatus is controlled to supply gas to a gas supply area such that a wafer (W) passing through that area a plurality of times due to the revolution of the table (2) has a film formed thereon (par. 9).
Regarding claim 10: Kato et al. and Ito et al. disclose the above combination in which the input system (77) includes information about the wafers and slots corresponding them to identification numbers which can then connect to the process recipe information (Ito et al. pars. 80-83, figures 15-18).
Response to Arguments
Applicant's arguments filed January 19, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that controller language is a structural component in apparatus claims as it defines the physical constraints of operation of the apparatus, and also that Ito et al. does not receive or set parameter values, and only indicates the recipe name and substrate type.
In response:
Applicant’s arguments regarding the controller are irrelevant to the instant case. Firstly, nothing in claim 1 requires the controller to show or perform any of the display-related tasks of the claim- those limitations are purely related to the display itself- “wherein the display is configured to present a plurality of process-setting screens including:” Second, this is very clearly a functional limitation only, and has no bearing on the actual structure of the device or the physical constraints thereof, as Applicant appears to be arguing. Even if this limitation was connected to the controller itself, all it requires is a display capable of showing multiple screens and receiving input, which Ito et al. clearly teaches.
Regarding Ito et al., Applicant again has mischaracterized the disclosure of the reference. Ito et al. states that recipe contents including process parameters can be edited via the “recipe setting” button on the input unit (77) (par. 67, figure 6). This would naturally require an additional window, which can be considered a screen, to show the recipe contents and allow for editing. Editing the recipe contents when deemed necessary is effectively the exact same functionality being claimed in claim 1 (to the best of the current understanding of the extremely indefinite claim), and therefore despite not using the exact same language, Kato et al. in view of Ito et al. do still read on claim 1.
Conclusion
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 STEPHEN A KITT whose telephone number is (571)270-7681. The examiner can normally be reached M-F 9am-5pm.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
3/25/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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