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 .
Claim Rejections - 35 U.S.C. § 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.
Claims 1 and 3-4 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.
1. Although the reducing step is in the original disclosure, having the reducing step after the applying step is not in the original disclosure. See App. Spec. fig. 15. The reducing step is out of order making a new method and is thus new matter.
3-4. These claims are rejected for being dependent upon a rejected claim.
Claim Rejections - 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Nagai et al., U.S. Patent App. Pub. No. 2007/0158202 A1 [hereinafter Nagai].
The body of the claim is generally written with parentheses following the limitations indicating the prior art's teachings and/or examiner notes.
1. Nagai et al., U.S. Patent App. Pub. No. 2007/0158202 A1 [hereinafter Nagai] teaches claim 1 as follows:
A plating method, comprising:
holding a substrate (substrate holder holds substrate W; Nagai [0072]-[0073], figs. 13 & 17);
supplying a plating liquid onto the held substrate (initial plating solution supplied; Nagai [0105], figs. 13 & 17);
supplying a conductive liquid, which is different from the plating liquid supplied on the substrate, onto the plating liquid (replenishing plating solution from plating solution component replenishment system 138 is supplied onto the original plating solution; Nagai [0111]-[0115], [0150], figs. 13, 17, & 21A-21B); and
applying a voltage between the substrate and the conductive liquid (power supply applies power, which would take voltage; Nagai [0106], figs. 13 & 17); and
reducing the amount of the plating liquid on the substrate after the supplying of the plating liquid (the plating solution on the substrate W is recovered and the rest is rinsed off of the substrate; Nagai [0107]).
Claim Rejections - 35 U.S.C. §§ 102 & 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim 4 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by, or in the alternative rejected under 35 U.S.C. § 103(a) as obvious over Nagai as applied to claim 1 previously.
The body of the claim is generally written with parentheses following the limitations indicating the prior art's teachings and/or examiner notes. Each claim is numbered at the start and these numbers should not be confused to be paragraph numbers.
4. A person having ordinary skill in the art would have recognized that Nagai would have the process be repeated so that more than just one wafer is plated so that a profit can be made.
Alternatively, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method by repeating the method to make more than just one wafer to make a profit.
Allowable Subject Matter
Claims 5-7 are allowed.
It is noted that claim 3 is mutually exclusive to claim 1’s reducing step.
The following is an examiner’s statement of reasons for allowance:
Nagai et al., U.S. Patent App. Pub. No. 2007/0158202 A1 [hereinafter Nagai] is the closest prior art of record. Nagai teaches:
A plating method, comprising:
holding a substrate (substrate holder holds substrate W; Nagai [0072]-[0073], figs. 13 & 17);
supplying a plating liquid onto the held substrate (initial plating solution supplied; Nagai [0105], figs. 13 & 17);
supplying a conductive liquid, which is different from the plating liquid supplied on the substrate, onto the plating liquid (replenishing plating solution from plating solution component replenishment system 138 is supplied onto the original plating solution; Nagai [0111]-[0115], [0150], figs. 13, 17, & 21A-21B); and
applying a voltage between the substrate and the conductive liquid (power supply applies power, which would take voltage; Nagai [0106], figs. 13 & 17).
However, Nagai and the prior art of record do not teach wherein the conductive liquid has a specific gravity smaller than that of the plating liquid.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794