DETAILED ACTION
Applicant’s Response
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 14, 2026, has been entered.
Claim 1 is amended; claims 12-16 are new.
The applicant contends:
(1) The new material reciting a “back pressure regulator” is supported by both the written description and the drawings. For example, Figure 4 depicts first and second regulators (141, 142), and the written description clarifies the corresponding function of regulating an external pressure applied to the outside of the bellows. This provides sufficient context for one of ordinary skill to determine the corresponding structure (pp. 7-9).
(2) The prior art does not teach the new material recited by the final paragraph of claim 1 – namely, controlling the etching apparatus so that the internal and external bellows pressures, the etching chamber pressure, and the etchant supply part pressure are all equal (pp. 10-12).
In response,
(1) The examiner notes that the written description fails to provide any structural description of the device corresponding to the previously recited “back pressure regulating unit,” and reference characters 141 and 142 of Figure 4 merely indicate generic boxes lacking unique structural characteristics. As such, one of ordinary skill could not reasonably divine the specific structure corresponding to this “unit.”
Applicant has now substituted regulator for “unit,” but this fails to address the outstanding issues. Firstly, the term regulator does not appear, in any form, within the specification. Secondly, the direct substitution of regulator for “unit” implies that these terms are of commensurate scope. But if “unit” is generic, so must be regulator. And if they are not of commensurate scope, then regulator is new matter. As can now be seen, the recitation of regulator does not resolve the status of this particular feature.
Lastly, the examiner notes that the “back pressure adjusting unit” was originally recited by claim 8, whereby 112 rejections were applied in the 11/6/24 Office letter. Applicant successfully circumvented the rejection by reciting the function of controlling a back pressure instead of explicitly naming the device which adjusts back pressure. The examiner suggests using this same strategy, once more, to overcome the outstanding 112(a) rejections.
(2) The examiner accepts this characterization and has withdrawn the outstanding rejections. In view of further search, new rejections have been elaborated below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder – “part,” in this case – that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
The “etchant supply part” of claim 1.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The etchant supply part (112) will be interpreted as a fluid reservoir in accordance with Figure 5 of Applicant’s disclosure.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 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.
Claim 1 and its dependents are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed had possession of the claimed invention. The final paragraph of claim 1 refers to a “back pressure regulator,” but this term does not appear in the original disclosure. As such, the limitation constitutes new matter and the claim is rejected under 1112(a). Claims 12-16 also recite the feature of a “back pressure regulator” and are rejected over the same grounds. To expedite prosecution, the claims will be examined as written.
The examiner notes that Applicant has substituted “regulator” for “adjusting unit,” ostensibly, to remove the limitation from 112(f) consideration. Instead, the examiner suggests reciting the function of back pressure regulation rather than attributing this function to a structure that the specification does not disclose. (Applicant previously used this strategy to overcome the 112 rejections of claim 8, elaborated in the 11/6/24 Office letter. Possibly, these amendments can serve as a template for the suggested changes.)
Separately, claim 1 refers to “the etching part” in two instances: the penultimate line of page 1 and the seventh-to-last line. This recitation is improper because “the etching part” lacks antecedent basis. Correction is required. To promote compact prosecution, the examiner will interpret the contested limitation as denoting the etching chamber, i.e., the etchant is discharged to the etching chamber.
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 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.
Claims 1, 4-5, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WO 2020/218813, where the examiner is relying upon corresponding document US 2022/0108897 for purposes of translation, in view of Tanaka et al., US 6,186,171, Iwaki, “Pneumatic Drive Bellows Pump FS-80NT,” Iwaki II, “Pneumatic drive bellows pumps FS series,” and Hashimoto et al., US 2021/0057241.
Claims 1, 13-16: Lee discloses an etching apparatus (Fig. 10), comprising:
An etching chamber (100) in which an etchant etches a target object [0053];
An etchant supply part, comprising a fluid reservoir (620) and a fluid conduit, which collects the etchant from the etching chamber and supplies the etchant to the etching chamber using an etchant pump (630) [0087].
Lee describes an embodiment in which a gas circulation pipe couples the etching chamber (100) and etching supply part (620), where a “first pressurization maintaining unit” (810) regulates the pipe’s internal pressure [0093]. Although Lee does not explicitly define this “pressurization maintaining unit” as a pump, whereby claim 1 recites an “air pump,” the functions attributed thereto are commensurate with such a mechanism, e.g., maintaining a volume in a “pressurized atmosphere” [0093]. The examiner, then, takes Official Notice that it is known within the art to avail a pump to pressurize an internal atmosphere, whereby the selection of a pump to pressurize Lee’s etching chamber and supply part would have been obvious to the skilled artisan. Formally, then, Lee’s first pressurization maintaining unit (810) reads upon the claim 1 recitation of an “air pump.”
Lee is silent regarding the internal structure of the etchant pump (630). In supplementation, Tanaka describes a pump (26) directed to the discharge of a fluid, the pump comprising first and second bellows (39a, 39b) arranged symmetrically within the pump’s casing (5, 10ff; Fig. 3). Upstream, a second pressure adjusting unit (60) provides air to a valve (51A) that alternately supplies and receives air from each gas chamber corresponding to the compressed or extended status of the bellows. For instance, the provision of air to the gas chamber of the first bellows compresses that bellows, thereby discharging etchant to the etching chamber; at the same time, the second bellows extends, pushing air out of the gas chamber to the valve. This operation then proceeds conversely, with the second bellows compressing and the first bellows extending. It would have been obvious to structure Lee’s etchant pump in accordance with the paradigm elaborated by Tanaka, as applying a known technique to a known device ready for improvement is within the scope of ordinary skill.
Continuing, Tanaka does not explicitly state that the external and internal pressures applied to each bellows are “equivalent.” Iwaki, though, discloses an etchant pump of analogous structure to Tanaka’s device – first and second bellows which are alternately compressed or extended to respectively discharge an etchant within the bellows and a gas outside the other bellows (p. 9). In addition, Iwaki disposes a back pressure regulator (“air exhaust”) on each discharge path of the etchant pump (Fig. 2, p. 19). Regarding the mode of operation, Iwaki explicitly seeks to minimize the internal and external pressures of a given bellows to prevent rupture (unnumbered, third page of document). In a related disclosure, Iwaki II emphasizes the same imperative: “Since the difference between the inside pressure and the outside pressure of the bellows can be held at a minimum level, an increase in the life of the bellows is to be expected” (p. 6). Given these deliverances, it would have been obvious to employ back pressure regulators to facilitate the attainment of pressure equality between the internal and external bellows volumes, as this technique obviates deformation.
Necessarily, given that the headspaces of the etching chamber and etching supply part are fluidically connected, their pressures will equilibrate. Similarly, the internal volume of the bellows is directly coupled to the etching chamber, so these pressures will also equilibrate. And given Iwaki’s imperative to set the external bellows pressure at the level of the bellows’ internal volume, all four volumes will have “equivalent” pressures, as the final paragraph of claim 1 requires.
Lastly, although Lee incorporates various controllers, the reference does not explicitly disclose a “processor.” Hashimoto, however, discloses a liquid etching facility comprising an array of pumps, valves, and reservoirs similar to that of Lee’s system. In addition, Hashimoto provides a programmable processor (9) which regulates every aspect of the facility, including the operation of the pumping units and the supply of etchant [0055-56]. It would have been obvious to integrate a programmable control unit within Lee’s system since it has been held that providing an automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art (In re Venner, 120 USPQ 192).
Claim 4: Trivially, it may be assumed that stopping the etching apparatus will also stop the operation of its subcomponents.
Claim 5: As shown by Figure 10 of Lee, the etchant supply part (620) is below the etching chamber (100), thereby permitting gravity to facilitate drainage from the latter to the former.
Claim 12: Availing the control unit to regulate the back pressure regulator would have been obvious, since it has been held that broadly providing mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art (In re Venner, 120 USPQ 192).
Conclusion
The following prior art is made of record as being pertinent to Applicant's disclosure, yet is not formally relied upon: Campion et al., US 2014/0290090. Campion discloses an etching chamber (110) coupled to a supply tank (112) via a recirculation line, whereby a pump (118) facilitates the movement of etchant between the two entities (Fig. 1; [0026]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN K FORD whose telephone number is (571)270-1880. The examiner can normally be reached on 11-7:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh, can be reached at 571 272 1435. The fax phone number for the organization where this application or proceeding is assigned is 571 273 8300.
/N. K. F./
Examiner, Art Unit 1716
/PARVIZ HASSANZADEH/Supervisory Patent Examiner, Art Unit 1716
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