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 March 2, 2026 was received. Claim 1 was amended.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 2, 2026 has been entered.
Claim Objections
The objection to claim 1 is withdrawn because Applicant corrected the typographical error.
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 1-3 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.
Claim 1 recites the limitation "the side surface" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
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.
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 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).
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 (pars. 35-41) 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). Therefore 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.
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, removal of this flange would nonetheless be an obvious design choice for one of ordinary skill in the art as it has no bearing on its function or criticality for the instant invention (MPEP 2143, 2144.04).
[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).
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that the new limitations are not taught by Yamanaka because it does not teach a “clean, uninterrupted vertical surface from the through-hole to the uppermost portion”.
In response:
Applicant’s arguments are not commensurate in scope with the claims. Nothing in the claim language forbids the presence of the flange shown in Yamanaka- there is nothing in the claims requiring a “clean, uninterrupted vertical surface” from the through-hole to the uppermost portion, and even if there was this language could potentially be unclear, or at the very least broad. An outer surface having a flange that extends horizontally does not change its status as an outer surface, or that it continues vertically to the uppermost portion of the material container.
Additionally, as stated above, the removal of this flange region is a simple design choice that in no way affects the functionality of the apparatus. Even in Applicant’s own invention this flange arrangement is in some embodiments and not in others, with no discussion of any benefits of it being there or not (see figures 9 and 10 for example). Therefore, even if the claims were to more specifically and distinctly require a purely vertical, uninterrupted surface without indefiniteness and new matter, the combination of Takashi et al. and Yamanaka would still read on it.
Even further, Applicant’s own embodiments do not appear to support the argued relationship, that an entirely vertical, uninterrupted surface extends from the through-hole to the top of the application liquid container- in particular, see figures 3-6 of the instant Application. These figures show that the through hole where the needle (23) protrudes is at the bottom of a narrowed region, and as it moves up the liquid container the outer surface extends outwardly in all four cardinal directions such that no surface of the application liquid container is an entirely, uninterrupted vertical surface from the through-hole to the top of the application liquid container. Figure 2 on the other hand does show this “purely vertical surface” arrangement, but appears to be a schematic drawing that does not represent the actual, physical invention, unlike the embodiment of figures 3-6, which show the real mechanical attachment points and structural relationships. Therefore, while the claims are still broad enough not to be new matter, any further amendment which attempts to require this “clean, uninterrupted vertical surface” may amount to new matter.
Conclusion
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
4/8/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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