DETAILED ACTION
Applicant’s Response
Acknowledged is the applicant’s request for reconsideration filed on May 26, 2026. Claims 13 and 15 are amended; claims 20 is new.
The applicant contends:
(1) The examiner cites paragraphs [0148-0171] of Nozawa as evidence of the apparatus’ capacity to execute the claimed functional limitations, but these passages are “merely boilerplate generic paragraphs…that disclose nothing of significance…Reliance by the Office on such generic boilerplate paragraphs is improper and clear error” (pp. 11-12).
(2) The Office has not provided support for the conclusion that Nozawa is capable of forming the various layers and films constitutive of the claimed invention. Rather, the Office simply asserts that the layers can be formed because Nozawa generally discloses sputtering, etching, and deposition capabilities (p. 12).
(3) Nozawa would not be motivated to perform the various processes recited by Applicant’s claim set (pp. 12-14).
(4) Ultimately, Nozawa does not disclose the claimed acts of removing an inorganic film and forming a metal oxide film over an organic compound film (p. 15).
In response,
(1) The examiner is genuinely amused by Applicant’s attempt to disqualify precisely those passages of Nozawa that bear most closely upon the claimed invention simply because the diction therein is insufficiently specific, i.e., “boilerplate,” by some unnamed and arbitrary standard; alas, the argument is unpersuasive.
The entirety of Nozawa’s application constitutes a disclosure to the public domain, whereby any aspect of said disclosure may be relied upon if it is germane to the limitations being claimed. The paragraphs characterized by Applicant as “generic” actually describe the precise structural arrangements of the various chambers, as well as their specific functional capabilities. Because these deliverances are directly relevant to the instant claim set, the examiner relies upon them.
(2) The examiner notes that Nozawa’s disclosure of, say, a sputtering chamber is dispositive evidence that said chamber is capable of forming a film that can be generated by a sputtering operation. For example, paragraph [0280] of Applicant’s specification asserts that the metal oxide layer formed by the sixth cluster of claim 13 is “formed by a sputtering method.” Relevantly, paragraph [0084] of Nozawa stipulates that a “sputtering method” is used to form a metal oxide like ITO; therefore, it may be concluded that Nozawa’s sputtering chambers (sp) are capable reproducing the claimed function of forming a metal oxide film.
Critically, Applicant’s claim set is directed to an apparatus, not a method. As such, the prior art need not disclose the various processes recited by Applicant’s claim set in order to satisfy the threshold for rejection. Rather, Nozawa must merely demonstrate the structural capacity of a given process chamber to perform the recited function if so directed by an operator, since it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). Put simply, if Applicant recites the application of a film formed by a CVD chamber, the prior art disclosure of a CVD chamber is sufficient to satisfy the threshold for rejection even without the disclosure of the particular film being claimed. This is because the CVD chamber is structurally capable of applying said film. The film, critically, is not a constituent of the apparatus but is merely a generative artifact of using the apparatus, i.e., intended use.
(3) The matter of motivation is external to the concept of intended use. So long as the prior art can demonstrate the structural capacity to reproduce a claimed function, the threshold for rejection is satisfied.
(4) Applicant’s characterization is inaccurate, as paragraph [0084] of Nozawa teaches the sputtering of a metal oxide. Regardless, as a general matter, the prior art need not disclose these features at all because they are functions performed by the apparatus, not structural components of the apparatus. This distinction is germane because the instant claim set is directed to an apparatus instead of a method. As it stands, because the claims are directed to an apparatus, the prior art does not need to explicitly disclose any recited function; rather, the prior art must simply demonstrate the theoretical capability to reproduce the recited function. As such, the examiner can readily concede, arguendo, to Applicant’s assertion that Nozawa may not disclose this or that discrete function without imperiling the legitimacy of the outstanding rejections.
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, 5, 11, 13, 15-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nozawa et al., US 2009/0206728.
Claims 1, 13, 20: Nozawa discloses equipment for manufacturing a light-emitting device, comprising:
First through seventh clusters (tc) (Fig. 7);
Wherein the second cluster (tc6) is connected to the first cluster (tc7) through a first buffer chamber (al7);
Wherein the third cluster (tc5-tc4) is connected to the second cluster (tc6) through a second buffer chamber (al6);
Wherein the fourth cluster (tc3-tc2) is connected to the third cluster (tc5-tc4) through a third buffer chamber (al4);
Wherein the fifth cluster (tc9-tc10) is connected to the fourth cluster (tc3) thorough a fourth buffer chamber;
Wherein the sixth cluster (tc11-tc13) is connected to the fifth cluster (tc9-tc10) through a fifth buffer chamber (al9);
Wherein the seventh cluster (tc14) is connected to the sixth cluster (tc11-tc12) through a sixth buffer chamber (al11);
Wherein the first through seventh clusters are structurally arranged in the order of the process steps.
The first cluster (tc7) comprises multiple deposition chambers (cv3, cv4) which are capable of forming stacked organic and inorganic layers if so directed by the operator [0147]. Further, being plasma-capable deposition chambers, the operator can employ one or both to perform a surface treatment [0105, 0165]. It has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959)).
The second cluster (tc6), as limned by Figure 7, includes sputtering chambers (sp3, sp4) but Nozawa contemplates an embodiment comprising a photolithography step, which necessarily entails the formation of a resist [0088]. It would have been obvious, then, in the pursuit of this second embodiment, to integrate a well-known device such as a spin-on coater to facilitate mask formation.
The third cluster (tc5-tc4) comprises etching chambers (et1, et2) which are capable of etching the stacked film and removing the resist mask.
The fourth cluster (tc3-tc2) comprises sputtering chambers (sp) and evaporation chambers (va) capable of forming organic and inorganic films. As the sputtering chambers comprise means for generating plasma, the operator may avail the device to perform the claimed step of “surface treatment” [0180].
The fifth cluster (tc9-tc10) includes a sputtering chamber (sp5) but Nozawa contemplates an embodiment comprising a photolithography step, which necessarily entails the formation of a resist [0088]. It would have been obvious, then, in the pursuit of this second embodiment, to integrate a well-known device such as a spin-on coater to facilitate mask formation.
The sixth cluster (tc11-tc13) includes both etching (et) and sputtering (sp) chambers which are respectively capable of etching a stacked film, removing a resist mask, removing an inorganic film, and depositing a metal oxide film.
The seventh cluster (t14) includes deposition (cv) chambers which are capable of coating a film with a resin. The final limitation of claim 1 also requires the seventh cluster to “remove a part of a resin,” but it should be noted that Nozawa suggests combining the etching, deposition, and alignment apparatuses “in various ways, when appropriate.” Simply outfitting the final cluster with an already disclosed etching chamber would be within the scope of ordinary skill.
Claim 5: The simple act of replicating one of Nozawa’s etching clusters would be sufficient to satisfy this limitation, where as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8). Nozawa, it should be noted, explicitly contemplates increasing the number of clusters [0148].
Claims 11, 15: The simple act of replicating one of Nozawa’s deposition clusters would be sufficient to satisfy this limitation, where as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Claims 16, 18: Nozawa explains that at least one of the deposition apparatuses (cv3, cv4) of the first cluster (tc7) may be configured to execute “plasma CVD” to generate the inorganic protection film (106) [0105, 0165]. Thus, the Office concludes that the deposition apparatus (cv3) of the first cluster (tc7) is capable of performing a fluorine-based surface treatment under plasma conditions, whereby it has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959)).
Claims 2-4, 8, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nozawa in view of Ikeda et al., US 2018/0039117.
Claims 2, 14: Nozawa’s sixth cluster only includes two dry etching apparatuses rather than three yet, given the reference’s suggestion that the chamber permutation of each cluster may be configured in various ways, the examiner understands the mere addition of one etching chamber to be within the scope of ordinary skill since as it has been held that mere duplication of the essential working parts of a device involves only routine skill (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Although Nozawa teaches a lithography step, the reference does not explicitly disclose the claimed bake, light-exposure, and development apparatuses. In supplementation, Ikeda elaborates an analogous method of forming a light-emitting device entailing the steps of light-exposure and development, as well as pre- and post-bake operations [0157, 0281]. It would have been obvious to integrate these steps within Nozawa’s lithography process to achieve the predictable result of fabricating a light-emitting device; it would be further obvious to provide dedicated chambers for each of these operations for reasons of environmental containment and throughput.
Claim 3: Ikeda prescribes an ashing process [0269].
Claim 4: Ikeda prescribes film-formation via ALD [0214].
Claim 8: As discussed above, the mere act of replicating one of Nozawa’s etching clusters would be sufficient to satisfy the recitation of an eighth cluster, whereby Ikeda discloses an ashing operation.
Claim 12: As disclosed above, Nozawa provides evaporation (va) and sputtering (sp) apparatuses, whereby Ikeda suggests the deposition technique of ALD.
Claims 6-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nozawa in view of Boyd et al., US 2008/0057221.
Claims 6-7: Nozawa is silent regarding the phase status of the etchant. Boyd, though, describes an etching cluster comprising both wet (240) and dry (270) etching chambers [0045, 0048]. This arrangement augments the range of etching operations by facilitating plasma-based etching alongside wet operations, while enhancing efficiency by locating both types within the same cluster [0004]. For at least these reasons, it would have been obvious to include both wet and dry units within Nozawa’s etching cluster.
Claims 9-10: As discussed above, Boyd discloses a cluster comprising both plural wet and plural dry etching units [0045, 0048].
Conclusion
The following prior art is made of record as being pertinent to Applicant’s disclosure, yet is not formally relied upon: Yamazaki et al., US 2004/0040504. Yamazaki discloses an apparatus for forming a light-emitting device comprising first through fourth clusters capable of executing sputtering, evaporation, and etching ([0141-0145]; Fig. 1).
THIS ACTION IS MADE FINAL. 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 extension fee 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 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
/KARLA A MOORE/ Primary Examiner, Art Unit 1716
Prosecution Insights