DETAILED ACTION
This action is responsive to Applicant’s reply filed 5/12/2026.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Status
Claims 1, 4-5, 9, and 11-12 are pending.
Claims 2-3, 6-8, and 10 are cancelled.
Claims 1 and 9 are currently amended.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 9 and 11-12 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.
Regarding claim 9, the limitation: “wherein an opening area of said annular upper portion above said substrate is not less than a half of the area of an arrangement circle of contacting positions of support pins of said supporter” is regarded as new matter. There is no mention of a mathematical relationship between the “opening area of said annular upper portion above said substrate” and an area of the imaginary “arrangement circle” as claimed. As was cited in the previous Office Action (pg. 4), proportions of features in a drawing are not evidence of actual proportions when drawings are not to scale – see MPEP 2115(II). The instant disclosure does not describe the Drawings as being to scale, nor is there any specific mention of this mathematical relationship.
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 9 and 11-12 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.
Regarding claim 9, the limitation: “wherein a diameter of an opening area of said annular upper portion above said substrate is not less than a half of the area of an arrangement circle of contacting positions of support pins” is regarded as indefinite because the metes and bounds of the claim cannot be reasonably determined.
Particularly, it is unclear how Applicant intends “an arrangement circle of contacting positions” to be construed. Par. [0021] of the as-filed Specification identifies lower holding member #22 as a support pin, but the drawings only depict two such members (Fig. 2). Par. [0027] identifies #32 as an “upper holding member”, thus cannot be interpreted as a support pin for purposes of identifying an “arrangement of support pins”.
Applicant’s arguments (pg. 8, see excerpt reproduced below) appear to imply that the upper holding members #32 should be construed as support pins for purposes of identifying this imaginary circle:
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However, the instant disclosure does not describe upper holding members #32 as support pins- Fig. 1 shows members #32 as contacting an outer edge of the substrate and supporting it from above. Even though the shape of #22 and #32 appears to be similar, the metes and bounds of the claim are unclear.
As another matter, the “arrangement circle” lacks a clear depiction or description that geometrically defines the circle. As shown in Fig. 2, there is a circle drawn that intersects #22 and #32, but the geometric basis for this circle is unclear. Particularly, how a PHOSITA is supposed to determine the diameter of this “arrangement circle”. The Examiner submits the disclosure is unclear whether this diameter should extend from a center of a pin #32 to a center of an opposite pin #22, merely beginning/ending at any portion of either pin, extending from the outer edges of each pin, etc.
As previously set forth, in the interest of compact and expedited prosecution, the Examiner interprets the claim as reading: “the diameter of the opening is smaller than the diameter of the support body” as shown in Figs. 1 and 3A, diameter of #313 less than #21.
Regarding claims 11-12, the claims are rejected at least based upon their dependencies.
Claim Rejections - 35 USC § 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.
Claims 9 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Negoro (US Pub. 2019/0240597).
Regarding claim 9, Negoro teaches a substrate processing apparatus for supplying a processing liquid onto a substrate to process said substrate ([0056] and Fig. 3, substrate processing apparatus #1), comprising:
a supporter for directly or indirectly supporting a substrate in a horizontal position ([0066] and Fig. 3, spin base #12);
a rotator for rotating said supporter around a central axis oriented in an up-and-down direction ([0066] and Fig. 3, spin motor #14);
an annular member which is separably placed on said supporter and rotates together with said supporter while covering an outer edge portion of said substrate supported by said supporter ([0079] and Fig. 3, shielding member #33), wherein said annular member includes:
an annular sidewall opposed to an outer periphery of said substrate supported by said supporter and an outer periphery of said supporter in a radial direction (see Fig. 3);
an annular upper portion extending from said annular sidewall inward in the radial direction and being opposed to an outer edge portion of said upper surface of said substrate supported by said supporter in the up-and-down direction (see Fig. 3), wherein a diameter of an opening area of said annular upper portion above said substrate is smaller than the diameter of the support body (see Figs. 3-4, upper central opening #38 smaller in diameter than base #12; interpreted as italicized due to the §112(b) rejection),
an annular protruding portion protruding downward in an inner peripheral portion of a lower surface thereof, the annular protruding portion facing an outer edge portion of the upper surface of the supporter (see Fig. 3, “outer portion” of the supporter can be reasonably interpreted as any portion not including the center, where a “portion” can be drawn from the annular upper portion that “protrudes downward”; the Examiner submits a “portion” is reasonably interpreted as “an often limited part of a whole” – Merriam-Webster Dictionary);
a nozzle for supplying a processing liquid onto an upper surface or a lower surface of said substrate supported by said supporter ([0069] and Fig. 3, either of upper center nozzle #45 or lower surface nozzle #15), and
a fan filter unit for generating an airflow going downward toward an opening of said annular upper portion ([0063] and Fig. 3, fan filter unit #5).
Regarding claim 11, Negoro teaches wherein said nozzle supplies an etching solution onto said lower surface of said substrate supported by said supporter ([0069]: lower nozzle can supply hydrochloric acid).
Regarding claim 12, Negoro teaches an annular cover disposed outside said annular member in the radial direction in a still state, wherein an upper portion of said annular cover gets closer to an outer peripheral surface of said annular sidewall while going inward in the radial direction ([0074] and Fig. 3, either guard #25).
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.
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Negoro (US Pub. 2019/0240597) in view of Higashijima (US Pub. 2014/0116480), with Iwao (US Pub. 2019/0091733) as an evidentiary reference.
Regarding claim 1, Negoro teaches a substrate processing apparatus for supplying a processing liquid onto a substrate to process said substrate ([0056] and Fig. 3, substrate processing apparatus #1), comprising:
a supporter for directly or indirectly supporting a substrate in a horizontal position ([0066] and Fig. 3, spin base #12);
a rotator for rotating said supporter around a central axis oriented in an up-and-down direction ([0066] and Fig. 3, spin motor #14);
an annular member which is separably placed on said supporter and rotates together with said supporter while covering an outer edge portion of said substrate supported by said supporter ([0079] and Fig. 3, shielding member #33), wherein said annular member includes:
an annular sidewall opposed to an outer periphery of said substrate supported by said supporter and an outer periphery of said supporter in a radial direction (see Fig. 3);
an annular upper portion extending from said annular sidewall inward in the radial direction and being opposed to an outer edge portion of said upper surface of said substrate supported by said supporter in the up-and-down direction (see Fig. 3),
an annular protruding portion protruding downward in an inner peripheral portion of a lower surface thereof, the annular protruding portion facing an outer edge portion of the upper surface of the supporter (see Fig. 3, “outer portion” of the supporter can be reasonably interpreted as any portion not including the center, where a “portion” can be drawn from the annular upper portion that “protrudes downward”; the Examiner submits a “portion” is reasonably interpreted as “an often limited part of a whole” – Merriam-Webster Dictionary);
a nozzle for supplying a processing liquid onto an upper surface or a lower surface of said substrate supported by said supporter ([0069] and Fig. 3, either of upper center nozzle #45 or lower surface nozzle #15), and
a fan filter unit for generating an airflow going downward toward an opening of said annular upper portion ([0063] and Fig. 3, fan filter unit #5).
Negoro does not appear to teach wherein an opening area of said annular upper portion above said substrate is not less than a half of the area of said substrate.
However, Higashijima teaches this limitation (Figs. 1-2, par. [0038], area defined by internal periphery #53 appears to be much larger than half of the area of wafer W, even considering that the Drawings are not necessarily to scale).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to widen the opening area of Negoro similar to that of Higashijima in order to allow for sufficient exhaust around the cup member by adjusting the ratio of flow resistance of the fluid flow path in and around the cover member and wafer (Higashijima – [0038]).
The Examiner notes that Higashijima teaches a more clearly defined “annular protruding portion (Fig. 3, portion above surface #52). The Examiner maintains that Negoro reasonably teaches this limitation without Higashijima. However, in the interest of compact and expedited prosecution, the Examiner sets forth an additional ground of rejection wherein Higashijima is relied upon to teach this feature for the same rationale as the combination presented above. This is to be construed as a simultaneous and alternative rejection to the one explicitly set forth above.
Regarding the limitation: “said substrate having a diameter of 300 mm”, the Examiner notes Negoro does not appear to explicitly teach this feature. However, this limitation is recited merely as part of an intended use of the apparatus, and not as a structurally limiting constituent member of the claimed apparatus. As such, the limitation is only given weight to the extent that the prior art would be capable of processing a 300 mm wafer. See MPEP 2114(II).
The Examiner submits that 300 mm semiconductor wafers are common in the art, and points to par. [0091] of Iwao as support for such an assertion.
Additionally, the above limitation is merely a statement relating to a material or article worked upon by a structure. A claim containing an “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”. See MPEP 2115.
Regarding claim 4, Negoro teaches wherein said nozzle supplies an etching solution onto said lower surface of said substrate supported by said supporter ([0069]: lower nozzle can supply hydrochloric acid).
Regarding claim 5, Negoro teaches an annular cover disposed outside said annular member in the radial direction in a still state, wherein an upper portion of said annular cover gets closer to an outer peripheral surface of said annular sidewall while going inward in the radial direction ([0074] and Fig. 3, either guard #25).
Response to Arguments
Applicant has amended claim 1 to eliminate new matter and indefinite claim language, thus the §112(a) and §112(b) rejections of claims 1 (and claims dependent thereon) are withdrawn.
Applicant has amended claim 9 in an attempt to eliminate new matter and indefinite claim language, but the amended limitations have created new grounds of rejection under §112(a) and §112(b).
Applicant’s arguments concerning the §102(a)(1) of amended claims 1 and 9 have been carefully considered, but are not persuasive.
Particularly, the Examiner notes Applicant has not particularly addressed the Examiner’s previous rejection of claims 3 and/or 10 in view of Negoro, the limitations of which have been added to claims 1 and 9 (respectively). Applicant merely states:
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This assertion lacks any additional detail or reasoned rebuttal, thus is not persuasive. The Examiner believes Negoro reasonably teaches this feature, thus the §102(a)(1) rejections of claims 9 and 11-12 are maintained.
Claim 1 recites new features not previously set forth that overcome the previous §102(a)(1) rejections. However, claims 1 and 4-5 are newly rejected under §103 in view of Higashijima, as was mentioned in the previous Office Action (pg. 11).
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 Kurt Sweely whose telephone number is (571)272-8482. The examiner can normally be reached Monday - Friday, 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on (571)-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kurt Sweely/Primary Examiner, Art Unit 1718
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