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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/13/2025 has been entered.
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 1 and 5-17 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.
Amended claim 1 recites the limitation "the sputtering surface of at least one of the one or more targets" (emphasis added). There is insufficient antecedent basis for this limitation in the claim since it is unclear as to whether the emphasized “the sputtering surface” is intended to refer back to the claimed “a sputtering surface of each of the first target and the second target”, only one “sputtering surface” of one of “the first target and the second target”, a distinct ‘target’ thereof, or some combination or variant thereof. Claims 5-17 are also rejected as depending on claim 1.
Claim 13 (dependent on amended claim 1) recites “the conveyor system is arranged to convey the substrate along a curved path and the one or more elongate antennae are curved in the same direction as a curvature of the curved path” (emphasis added), rendering claim 2 unclear as to whether the “curvature” is intended to refer to the “first curvature” of claim 1, or a distinct ‘curvature’ thereof.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kuehnle (i.e. REF1, US 4,294,678) in view of Kuehnle (i.e. REF2, US 4,278,528).
With respect to claim 1, REF1 discloses in figs. 1 and 3 a sputter deposition apparatus [10] or [60] comprising: a remote plasma generation arrangement is present to ionize a gas of argon to provide “heavy ions” (i.e. plasma) to bombard the targets [14] and [74] for sputtering (col. 1, lines 6-28); and a confining arrangement to provide a magnetic field to confine the plasma within a deposition zone from targets [14] or [74] to a substrate [12] or [66] (col. 1, lines 6-27; col. 2, lines 10-55; col. 3, lines 12-34); the targets [14] or [74] sputter deposit target material onto the substrate [12] that is conveyed via conveyor system in a conveyance direction from a first side of the deposition zone to a second side of the deposition zone (Abstract; col. 1, lines 64-66; col. 2, lines 1-4 and 15-50; col. 3, lines 9-30), wherein figs. 1 and 3 show different conveyor systems that are interchangeable depending on shapes of the targets [14] or [74]: fig. 1 shows a drum [16] with a curved member with a first curvature as the conveyor system for the substrate [12] past the targets [14] that are “arcuate” (i.e. concave) (col. 2, lines 23-50); and fig. 3 shows the conveyor system for the substrate [66] past the targets [74] that are flat or planar (col. 3, lines 12-24). REF1 further depicts in fig. 1: the conveyor system [16] comprises a curved member; the targets [14] are supported by at least one “backing plate” (i.e. claimed “target assembly”) [30] in the deposition zone, wherein the targets [14] are each: elongate along the conveyance direction; have a sputtering face that faces the conveyor system [16]; and such that each sputtering face has a second curvature conforms to the first curvature of the curved member of the conveyor system [16], wherein the confining arrangement is configured to confine the plasma to the at least one target support assembly [30] to sputter deposit the target material onto the substrate [12] or [66] (col. 1,. Lines 7-28; col. 2, lines 10-55; col. 3, lines 13-34).
However REF1 is limited in that “a gap between the first target and the second target which extends from the first side of the sputter deposition zone to the second side of the sputter deposition zone” to sputter deposit “target material as a first region on the substrate; target material as a second region on the substrate; and an intermediate region between the first and second region with no target material” is not suggested.
REF2 teach in figs. 1-2 a sputter deposition apparatus [10], similar to the sputter deposition apparatus in REF1’s fig. 3 (which is interchangeable with REF1’s fig.1 as discussed above), REF2’s sputter deposition apparatus [10] comprises: an anode (i.e. remote plasma generation arrangement) to provide plasma for sputtering of target material from first and second targets [46] within a deposition zone; a confining arrangement comprising permanent magnets (shown in fig. 3 as [210]) providing a confining magnetic field that substantially confines the plasma in the deposition zone to sputter material from the targets [46]; a substrate [12] moved in a conveyance direction from a left side (i.e. claimed “first side”) of the deposition zone to a right side (i.e. claimed “second side”) of the deposition zone by a conveyor system [62],[64],[90],[190],[200] (col. 6, lines 39-47; col. 7, lines 14-57), wherein fig. 3 depicts the conveyor system [62],[64],[90],[190],[200] comprises “rollers” (i.e. claimed “curved member”) [64],[90],[190] with a first curvature (col. 6, lines 39-44; col. 7, lines 16-19 and 50-52); “base plates” [48] and “mountings” [50] (e.g. at least one target support assemblies [48],[50]) to support the first and second targets [46] in the deposition zone to sputter target material onto the substrate [12] such that at least side surfaces of the first and second targets [46] face the conveyor system [62],[64],[90],[190],[200] and such that there is a gap between the first and second targets [46] that extends from the first side to the second side, and wherein the confining arrangement is configured to confine the plasma such that target material from the first target [46] elongated along the conveyance direction is deposited as a second stripe (i.e. claimed “second region”) [40] on the substrate [12], target material from the second target [46] elongated along the conveyance direction is deposited as a first stripe (i.e. claimed “first region”) [42] on the substrate [12], and an intermediate region with no target material between the first and second regions [40],[42] (Abstract; col. 1, lines 13-18; col. 4, lines 8-24; col. 5, lines 47-68; col. 6, lines 1-4; col. 7, lines 64-68; col. 8, lines 1-35). In addition, the claim requirement of “there is deposited: a target material as a first region on the substrate; target material as a second region on the substrate; and an intermediate region between the first and second region with no target material” relates to the intended functioning of the claimed sputter deposition apparatus, with the sputter deposition apparatus [10] of REF2 fully capable of functioning in the claimed manner for reasons discussed above. REF2 cites the advantage of the gap extending from the first side to the second side between the first and second targets [46] as “extreme flexibility” for “laying down sputtered stripes” of various materials (col. 5, lines 17-25).
It would have been obvious to one of ordinary skill in the art to incorporate the first and second targets [46] of REF2 for each of the targets [14] or [74] of REF1 to gain the advantage of flexibility for laying down sputtered stripes of varied materials.
With respect to claims 5 and 6, REF2 further depicts in figs. 1-3 the at least one target support assembly [48],[50] arranged to support the first and second targets [46] shown in fig. 1 within the deposition zone (col. 5, lines 47-64; col. 6, lines 39-47; col. 7, lines 14-57), wherein fig. 1 further shows the second target [46] offset from the first target [46] within the deposition zone along a first axis perpendicular to but substantially within a plane of the conveyance direction.
With respect to claim 7, REF2 further depicts in figs. 1-2 the at least one target support assembly [48],[50] supporting the first and second targets [46] are capable of rotating to change “aspects and/or positions of the targets 46” (e.g. change positions of the first and second targets [46] to an oblique angle to the conveyance direction) (col. 5, lines 17-29 and 47-57).
With respect to claims 8-10, REF2 further depicts in figs. 1-3 a first target magnetic element [210] associated with the first target [46] and a second target magnetic element [210] associated with the second target [46] (col. 3, lines 44-55; col. 7, lines 64-68; col. 8, lines 1-6), such that the at least one target support assembly [48],[50] are arranged with the first target [46] between the first target magnetic element [210] and the conveyor system [62],[64],[90],[190],[200], and the second target [46] between the first target magnetic element [210] and the conveyor system [62],[64],[90],[190],[200]. REF2 further discloses a “means for measuring and controlling” conditions (i.e. controller) of the sputter deposition apparatus [10] that is capable of controlling first and second magnetic fields from the first and second target magnetic elements [210] to control sputtering of the first and second targets [46] (col. 4, lines 63-68; col. 5, lines 1-16; col. 7, lines 58-63).
With respect to claim 11, REF2 further discloses the first and second targets [46] each comprises different materials (col. 10, lines 5-38).
With respect to claims 12 and 13, modified REF1 further depicts in figs. 1 3 the remote plasma generation arrangement comprises at least one elongate antenna that is elongated along the conveyance direction of the substrate [12] or [66] (col. 1,. Lines 7-28; col. 2, lines 10-55; col. 3, lines 13-34; claim 1). Fig. 1 depicts the conveyor system [16] conveys the substrate [12] along a curved path and the at least one elongate antenna (within the conveyor system [16]) is curved in the same direction as the first curvature of the curved path (col. 2, lines 23-55; claim 1).
With respect to claims 14 and 15, REF2 further depicts in fig. 4 the confining arrangement of permanent magnets [210] comprises at least one confining magnetic element that is elongate along the conveyance direction and a further at least one confining element (e.g. N and S poles) that is elongate in a direction substantially perpendicular to the conveyance direction (col. 8, lines 2-6 and 21-35).
With respect to claim 16, REF2 further depicts in figs. 1-3 the target support assemblies [48],[50] supports the targets [46] without an intervening element between the targets [46] and the substrate [12] during conveyance of the substrate [12] through the deposition zone via the conveyor system [62],[64],[90],[190],[200].
With respect to claim 17, modified REF1 further depicts in figs. 1 or 3 the conveyor system [16] comprises a roller to convey the substrate [12] or [66] (col. 2, lines 23-24 and 48-55; col. 3, lines 12-18), wherein the conveyance direction is substantially perpendicular to each axis of rotation of the roller as shown in figs. 1 or 3.
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 1 and 5-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17/774999 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending 17/774999 are overlap in scope with the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-19 of the copending 17/774999 would also meet the requirements set forth in claims 1 and 5-17 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 5-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 17/776709 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending 17/776709 are overlap in scope with the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-24 of the copending 17/776709 would also meet the requirements set forth in claims 1 and 5-17 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 5-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 17/776590 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending 17/776590 are overlap in scope with the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-18 of the copending 17/776590 would also meet the requirements set forth in claims 1 and 5-17 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 5-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17/774443 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending 17/774443 are overlap in scope with the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-19 of the copending 17/774443 would also meet the requirements set forth in claims 1 and 5-17 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 5-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 17/774421 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending 17/774421 are overlap in scope with the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-22 of the copending 17/774421 would also meet the requirements set forth in claims 1 and 5-17 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s Remarks on p. 10-13 filed 11/13/2025 are addressed below.
112 Rejections
Claim 1 has been amended to clarify the term “they”; the previous 112(b) rejection has been withdrawn.
103 Rejections
Applicant’s arguments on p. 10-13 with respect to amended claim 1 have been considered but are moot because the arguments do not apply to the new combination of references Kuehnle (newly cited US 4,294,678, i.e. REF1) and Kuehnle (previously cited, i.e. REF2) being applied in the current rejection.
Double Patenting Rejections
No Terminal Disclaimers have been filed; the rejections are maintained.
Applicant's arguments on p. 13-14 do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Conclusion
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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