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 .
The Applicant’s amendment filed on July 21, 2026 was received. Claim 1 was amended and claims 10-11 were newly added.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued August 22, 2024.
Claim Rejections - 35 USC § 112
The rejection of claim 1 as being indefinite under 35 U.S.C. 112(b) is withdrawn because Applicant amended the claim to correct the antecedent basis issue.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as unpatentable over Takashi et al. (JP 2006310266, translation filed August 22, 2024 used for citation purposes) in view of Yamanaka (US 2018/0359861) on claims 1-3 are maintained. The rejections are restated below.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi et al. in view of Yamanaka.
Regarding claim 1: Takashi et al. discloses a coating application unit (5) including an application needle (14) that applies a coating material, a recess (22c) for holding application liquid (13) having a through hole (22e) formed at the bottom portion thereof which allows the needle tip (14a) to pass through, a horizontal support plate (33) which can be considered a joining section that extends in a horizontal direction intersecting the longitudinal direction of the needle (14), and a case (22), part of which can be considered as having a needle movement section that extends from the support plate (33) to the through hole (22e) in the same vertical direction as that of the needle (14) (pars. 82-88, figures 2 and 13-23). Takashi et al. further shows that the support plate (33) is located at a vertical height which can be considered to correspond to the uppermost portion of the needle movement section of the case (22), where the case (22) is cylindrical in shape with a circumference that can be considered “exposed” (figures 17-19), and further discloses that case (22) can include a hole (22m) and stopper (44) on only one side such that the application unit (5) is asymmetrical with respect to a vertical axis (pars. 113-115, figures 22-23), also showing a step between the upper portion of the support plate (33) and the top of the case (22), namely formed by a flange (22f) (see e.g. figure 20).
Takashi et al. does not explicitly disclose the needle (14) protrusion distance, an exact width of the case (22) or an exact length of the case (22).
However, Takashi et al. does disclose that the distances between the needle (14) and the container (16) as well as between the needle (14) and the substrate (15) have to be known and controlled in order to perform the prescribed process without damaging the substrate (15) with excessive pressure (pars. 35-41, 63-65) indicating that the protrusion length is a result effective variable. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the various dimensions of the apparatus to arrive at a protrusion distance of 1-3mm for the needle (14) a because routine optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Furthermore, while the drawings are not explicitly labeled to be to scale, one of ordinary skill in the art would nevertheless recognize the size relationships between each of the elements in the figures and determine that the width of the recess (22c) and length of the case (22) must have certain length relationships to the width of the needle (14), which Takashi et al. discloses is between 0.4mm and 1mm (see figures 14 and 20-23). Furthermore, the needle movement section can be defined as only having a width extending as far as the recess (22c), or alternatively the movable shaft (37), which is the only area in which the needle actually moves, and the figures clearly show that the length of the needle movement section from the through hole to the support plate (33) is larger than the width of the recess (22c) or movable shaft (37) (see annotated figure 20 below). Alternatively, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to try using a number of sizes for the recess width and case length including 5mm or less for the width and 5mm or more for the length because the figures would motivate one to recognize they have particular size relationships, and because simple changes in size are not considered to be a patentable advance (MPEP 2144.04). Furthermore, Takashi et al. teaches that some parts need to be sized specifically to avoid accidental adhesion of the application liquid (13) (par. 118), which is another motivating factor in determining the sizes of the device.
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Takashi et al. fails to explicitly disclose that the joining section (i.e. support plate (33)) extends from only one side of the needle movement section in a cross-sectional view taken along a straight vertical line. However, Yamanaka discloses a very similar coating application unit (4) having an application material container (21) which has a joining section extending in only one direction when taken along a vertical cross section with a stem formed between an uppermost portion of the container (21) and the joining section (par. 44, figures 2 and 4). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a joining section arrangement and shape as taught by Yamanaka for the apparatus of Takashi et al. because simple changes in size and shape are not considered to be a patentable advance when no unexpected results are achieved and when no criticality is shown (MPEP 2144.04). Further, these two joining arrangements are shown by Takashi et al. and Yamanaka to be functionally equivalent for supporting a very similar coating material applicator, and simple substitution of functional equivalents is not considered to be a patentable advance (MPEP 2143, 2144.06).
In the above combination, only one side of the material container (21) has a joining section, such that a remaining side surface extends in the vertical direction from the through-hole to the uppermost portion of the material container, allowing the entire outer surface to be “entirely exposed” in the horizontal direction except for a portion covered by the joining section (see Yamanaka figure 2 annotated below, and figure 4). Yamanaka does show a single side opposite the joining section having a flange-like protrusion but this protrusion is still an outer surface of the movement section and is still exposed entirely in the horizontal direction. Even when viewed from above, this arrangement has the joining section extending in one radial direction and a side surface in a direction 180 opposite to the first, the side surface extending from the through-hole to the uppermost portion of the material container. Nothing in the claim forbids a flange from being present, as it continues to refer to the feature as a “surface” which can have contours. Regardless, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to try removing this flange because Takashi et al. shows that the device works equally well with those flanges (22f) (see e.g. figures 18-23) and without those flanges (see e.g. figures 6-9) and simple substitution of functional equivalents is not considered to be a patentable advance (MPEP 2143, 2144.06), and further trying from a finite number of solutions (with flange or without) is not considered to be a patentable advance (MPEP 2143E).
[AltContent: arrow][AltContent: textbox (Design choice “flange”)][AltContent: arrow][AltContent: textbox (Joining section)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Two “flat” outer sides)]
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Regarding claim 2: Takashi et al. discloses that the needle (14) has a width of 0.4 to 1mm, but also includes a taper with a lowest width of 30 to 70 microns (par. 29). The recess (22c) being 5mm or less would correspond to being less than or equal to five times the width of either a smaller portion of the main part of the needle (14) (i.e. a needle diameter of 0.5 mm x 5 would be 2.5mm for the recess) or alternatively being less than or equal to five times the width of the tapered portion (i.e. a tapered diameter of 50 micons x 5 would be 0.25 mm).
Regarding claim 3: Takashi et al. discloses that the coating unit (5) is part of a larger pattern correction apparatus (1) which is a liquid material application device (par. 24, figure 1).
Regarding claim 10: Takashi et al. discloses the above application unit in which the width of the recess (22c)/movable shaft (37) and the length of the case from the support plate (33) downwards are simple obvious design choices, as discussed above. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have a width of less than or equal to 5mm and a length of greater than or equal to 5mm because the figures would motivate one to recognize they have particular size relationships, and because simple changes in size are not considered to be a patentable advance (MPEP 2144.04). Furthermore, Takashi et al. teaches that some parts need to be sized specifically to avoid accidental adhesion of the application liquid (13) (par. 118), which is another motivating factor in determining the sizes of the device.
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that Takashi does not teach a width of the needle movement section as being equal to or smaller than its length from the bottom of the joining section, that Takashi does not establish the needle protrusion amount as a result effective variable, and that Yamanaka’s flange causes it to not read on the surface of the needle movement section being “entirely exposed” .
In response:
Regarding the length and width of the needle movement section, Applicant is reading the claims far too narrowly. The claimed needle movement section is not a well-defined physical, structural element in the claims, and as such it need not necessarily be a physically bounded structural element in the prior art either. The claims merely require that “a” width of the needle movement section is lower than its length, and as the needle movement section is defined purely as a section of a larger physical element, any number of widths can be considered to read on its width- this includes the width of the recess (22c) or moving shaft (37) among others, which the figures of Takashi clearly show as being lower than the length of the section from the bottom of the support plate (33) to the hole (22e). While figures cannot be assumed to be at scale, they can nonetheless teach one of ordinary skill in the art geometric relationships between different structures. Additionally, changing the shape of the case remains an obvious modification because simple changes in shape are not considered to be a patentable advance, especially when Takashi et al. teaches the importance of various sizes of the apparatus to avoid liquid adhesion (par. 118).
Regarding the needle protrusion, while Takashi et al. does not explicitly deem it to be a result effective variable, it nonetheless is a variable which has to be controlled and known in advance to avoid applying too much pressure to the substrate when lowering the application unit (par. 63-65), which indicates that it is indeed a result effective variable that either needs to be precisely controlled. Applicant’s argument that it does not affect air-bubble mixing or any other property Applicant is concerned with is immaterial to the fact that this protrusion distance is a variable which affects how much the application unit can move without causing damage to the substrate, meaning it is a result effective variable on its own. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding Yamanaka, Applicant is again reading the claims far too narrowly. The phrase “entirely exposed” does not carry the same structural weight that Applicant appears to be arguing- nothing about the existence of a flange or contour in any way causes the surface to be any less “exposed”. The surface continues from the through-hole to the top of the application unit as claimed. Further, as discussed above the removal of the flange is still an obvious modification for any number of reasons, as Takashi et al. shows the device working perfectly well either without the flange (see e.g. figures 6-9) and with the flange (see e.g. figures 18-23).
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.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
9/4/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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