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 .
Claim Status
Claims 1 and 3-15 are pending:
Claims 1 and 3-15 are rejected.
Claims 16-20 have been cancelled.
Response to Amendments
Amendments filed 02/04/2026 have been entered. Amendments to the claims overcome §112b rejections but do not overcome §103 rejections as previously set forth in non-final Office Action mailed 02/04/2026.
Amendments have necessitated new grounds of rejection.
Response to Arguments
Arguments filed 02/04/2026 have been entered. Arguments were fully considered.
On pgs. 6-9 and 11-12 of Applicant’s arguments, Applicant argues that:
Neither Osada nor Koyama discloses, teaches or suggests that "the apparatus is programmed to operate, during a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped, to drain the chemical solution that passes through the filter" as recited in claim 1 (emphasis added).
The Office Action indicates that "Osada and Koyama teach the apparatus ... configured to operate, during a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped, to drain the chemical solution that passes through the filter (Osada, when an abnormality occurs, the control device 3 may cause the circulation pump 27 to stop the supply of the chemical liquid, see Google Patents) (Koyama, the circulation line purging mechanism 16 is connected, and on the upstream side of the second position 12 c to which the drain line 16 f of the circulation line purging mechanism 16 is connected, see C3/L45-55) (the combination of Osada and Koyama teaches the claimed limitation)" (Office Action: pages 5-6).
Paragraph [0111] of Osada quoted by the Examiner states that "when the above-described abnormality occurs, the control device 3 may cause the circulation pump 27 to stopthe liquid delivery of the chemical liquid" (emphasis added; the English machine translation provided by Ministry of Intellectual Property of Korea). By way of contrast, claim 1 requires that "the apparatus is programmed to operate, during a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped,to drain the chemical solution that passes through the filter" (emphasis added).
Further, column 3, lines 45-55 of Koyama teaches "the circulation line purging mechanism 16 has ... a drain line 16f connected to the circulation line". However, nothing in Koyama teaches that the purged gas is drained "during afirst duration, from when a pump of the chemical supply unit is restarted after the pump had stopped" (emphasis added). Specifically, Koyama does not disclose, teach or suggest a specific operation duration of draining the purged gas which is "a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped" as recited in claim 1 (emphasis added).
Thus, Osada and Koyama do not disclose teach or suggest that "the apparatus is programmed to operate, during a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped, to drain the chemical solution that passes through the filter" as recited in claim 1 (emphasis added).
Osada and Koyama also fail to disclose, teach or suggest that "the apparatus is programmed ..., during a second duration after the first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped], to drain a portion of the chemical solution that passes through the filter and to supply some other portion of the chemical solution through the supply line to the chamber" as recited in claim 1 (emphasis added). The Office Action contends that "Osada and Koyama teach the apparatus.. configured ... to drain a portion of the chemical solution that passes through the filter and to supply some other portion of the chemical solution through the supply line to the chamber (Osada, chemical liquid supply device 23 further includes a circulation pump 27 that sends the chemical liquid in the supply tank 24 to the circulation piping 25, a circulation filter 28 that removes foreign substances such as particles from the chemical liquid, and a chemical liquid, see Google Patents)" (Office Action: pages 5-6). However, "chemical liquid supply device 23 further includes a circulation pump 27 that sends the chemical liquid in the supply tank 24 to the circulation piping 25, a circulation filter 28 that removes foreign substances such as particles from the chemical liquid, and a chemical liquid" allegedly taught in Osada is not a specific disclosure, teaching or suggestion that "the apparatus is programmed ..., during a second duration after the first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped], to drain a portion of the chemical solution that passes through the filter and to supply some other portion of the chemical solution through the supply line to the chamber" as recited in claim 1 (emphasis added).
Therefore, according to the USPTO Examination Guidance, "a claim reciting a computer programmed to perform a function: ... Cannot be rejected based upon prior art that discloses a general purpose computer that would be able to be programmed to perform the same function" and "the claim recite functionalities that cannot be practiced in hardware alone and reuire enabling software - therefore the functional language adds structural limitations to the claimed invention" and "[i]t would not be appropriate to apply prior art that discloses the CPU hardware alone asserting that the CPU could be programmed to perform the claimed functions" (emphasis added). Accordingly, the Office Action's contention that "the system [of Osada] iscapable of performing the intended function" is improper. Neither Osada nor Koyama discloses, teaches or suggests the operations of claim 13 that "the apparatus is programmed to operate, during a first duration, to turn off the first on-off valve and turn on the second on-offvalve, the apparatus is programmed to operate, during a second duration after the first duration, to turn on the first on-off valve and maintain the second on-off valve turned on, and the apparatus is programmed to operate, during a third duration after the second duration, to turn on the second on-off valve and maintain the first on-off valve turned on" (emphasis added).
Otherwise, the Applicant respectfully asks the Examiner to quote exact language of Osada or Koyama specifically disclosing the operations of claim 13 that "the apparatus is programmed to operate, during a first duration, to turn off the first on-off valve and turn on the second on-off valve, the apparatus is programmed to operate, during a second duration after the first duration,to turn on the first on-off valve and maintain the second on-off valve turnedon, and the apparatus is programmed to operate, during a third duration after the second duration, to turn on the second on-off valve and maintain the first on-off valve turned on" so that the Applicant can properly understand the ground of the rejection and formulate a response (emphasis added).
For at least the foregoing reasons, the Applicant respectfully submits that claim 13 is not obvious over Osada in view of Koyama, and requests reconsideration and withdrawal of § 103 rejection of claim 13.
This argument is not persuasive because Osada in combination with Koyama teaches a control device which is a computer executing stored programs to control timed valve operations (Osada, see pgs. 12, 15 and 21), therefore the device of Osada operates during defined time valves, such as T1 and T2 (see Fig. 11 of Osada). The control device of Osada automatically actuates valves in response to a pump operation; such automated control inherently requires the apparatus to be programmed to be perform the recited operational sequence.
With respect to the limitation, “wherein the apparatus is programmed to operate, during a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped, to drain the chemical solution that passes through the filter and to operate, during a second duration after the first duration, to drain a portion of the chemical solution that passes through the filter and to supply some other portion of the chemical solution through the supply line to the chamber”, the limitations following “programmed to…” only recite functional aspects of the apparatus and do not introduce new structure.
With respect to Applicant’s arguments that functional limitations must be given patentable weight in computer/software-related claims, this argument is not persuasive because claims 1 and 13 are directed to an apparatus for processing a substrate but do not include a computer, software/algorithm, processor, control device and nor does the instant specification require computer or software. In fact, the instant specification does not provide sufficient support for “programmed to…” because it fails to recite the necessary structure such as hardware having memory and instructions required to execute a program.
The Examiner agrees that the amendment from “configured to…” language to “programmed to…” language narrows the scope of the claims; therefore, the rejection has been updated to reflect how Osada in combination with Koyama still reads on the claimed invention.
Therefore the §103 rejection of Osada in view of Koyama is maintained.
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 1 and 3-15 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. Dependent claims are hereby rejected due to dependency from rejected claims 1 and 13.
Claim 1 recites “wherein the apparatus is programmed to operate, during a first duration, from when a solution that passes through the filter, and to operate. during a second duration after the first duration, to drain a portion of the chemical solution that passes through the filter and to supply”, however the original claims nor the instant specification sufficiently support the language “programmed to” because said original claims and instant specification fail to recite a processor, computer or hardware having memory and instructions required to execute a program. Additionally, the original claims nor the instant specification recite the term “programmed to…” or any term analogous to “programmed to…” that would be recognized by one of ordinary skill in the art. Claim 13 recites similar language therefore rejected for similar reasoning.
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 and 3-15 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. Dependent claims are hereby rejected due to dependency from rejected claims 1 and 13.
Claim 1 recites “wherein the apparatus is programmed to operate, during a first duration, from when a solution that passes through the filter, and to operate. during a second duration after the first duration, to drain a portion of the chemical solution that passes through the filter and to supply”, it is unclear how the apparatus is programmed to perform the claimed function but does not recite corresponding structure such as a computer or processor that includes software to execute a program?
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3-5, 7-10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Osada (KR 20200044753) in view of Koyama (USPN 10,037,901).
Regarding claim 1, Osada teaches an apparatus for processing a substrate (substrate processing apparatus, see ABS and Fig. 4), comprising: a circulation line (circulation piping 25) connected to a chemical supply unit (liquid supply device 23 that supplies a chemical liquid) to circulate a chemical solution (see Fig. 4); a filter (circulation filter 28) installed in the circulation line to filter particles in the chemical solution (see Fig. 4); a supply line (supply pipe 31) connected to a first node of the circulation line and configured to supply the chemical solution to the chamber (see Fig. 4); and a drain line (drain port 32p)… and configured to drain the chemical solution.
Osada does not teach wherein the drain line is connected, in the circulation line, to a second node located between the filter and the first node.
Koyama teaches a substrate liquid treatment apparatus (see ABS) wherein the drain line (drain line 16f) connected, in the circulation line (a drain line 16f connected to the circulation to the circulation line 12), to a second node located between the filter and the first node (see Fig. 1), and configured to drain the chemical solution (the treatment liquid (chemical liquid) circulating through the circulation line 12; therefore the drain is configured to remove the chemical solution).
It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to modify the drain line of Osada by rearranging said drain line in the circulation line, to a second node located between the filter and the first node, and configured to drain the chemical solution as disclosed by Koyama because it allows for safe and efficient disposal of chemicals used for treatment.
Osada in combination with Koyama teaches a control device which is a computer executing stored programs to control timed valve operations (Osada, see pgs. 12, 15 and 21), therefore the device of Osada operates during defined time valves, such as T1 and T2 (see Fig. 11 of Osada) and teaches controlling during a first duration and a second duration as required claim 1. The control device of Osada automatically actuates valves in response to a pump operation; such automated control inherently requires the apparatus to be programmed to be perform the recited operational sequence of “wherein the apparatus is programmed to operate, during a first duration, from when a pump of the chemical supply unit is restarted after the pump had stopped, to drain the chemical solution that passes through the filter and to operate, during a second duration after the first duration, to drain a portion of the chemical solution that passes through the filter and to supply some other portion of the chemical solution through the supply line to the chamber”.
Regarding claim 3, Osada and Koyama teach the apparatus of claim 2, wherein the chemical solution that is supplied to the chamber during the second duration is used for nozzle flushing (Osada, chemical liquid supplied from the branch portion 30 to the supply pipe 31 is discharged from the chemical liquid nozzle 21 and supplied to the substrate W, see Google Patents).
Regarding claim 4, Osada and Koyama teach the apparatus of claim 2, wherein the apparatus is programmed to operate, during a third duration after the second duration, to not drain the chemical solution that passes through the filter but to supply the chemical solution through the supply line to the chamber (Osada, the system is capable of performing the intended function because valve 34 prevents draining into the chamber, see Google Patents).
Regarding claim 5, Osada and Koyama teach the apparatus of claim 1, wherein the apparatus is programmed to further operate, during a first duration, from when the chemical supply unit is operated after an initial setup of the chemical supply unit, to drain the chemical solution that passes through the filter (Koyama, the circulation line purging mechanism 16 is connected, and on the upstream side of the second position 12 c to which the drain line 16 f of the circulation line purging mechanism 16 is connected, see C3/L45-55) (the combination of Osada and Koyama teaches the claimed limitation).
Regarding claim 7, Osada and Koyama teach the apparatus of claim 1, wherein the chemical supply unit supplies the chemical solution at a first flow rate (Osada, there is inherently a first flow rate), the drain line drains the chemical solution at a second flow rate (Koyama, there is inherently a second flow rate), the supply line transfers the chemical solution to the chamber at a third flow rate (Osada, there is inherently a third flow rate); wherein the first flow rate being equal to or greater than a sum of the second flow rate and the third flow rate (this limitation relates to a manner of operating the device, because Osada and Koyama teaches the claimed structure, the combination is capable of performing the intended function).
Regarding claim 8, Osada and Koyama teach the apparatus of claim 1, further comprising: a first on-off valve (Osada, discharge valve 34) positioned between the first node and the second node and configured to further determine whether to supply the chemical solution to the supply line (Osada, see Fig. 4) (the combination of Osada and Koyama teaches the claimed limitation).
Regarding claim 9, Osada and Koyama teach the apparatus of claim 1, further comprising: a second on-off valve (Koyama, shutoff valve 16g) installed on the drain line and configured to determine whether to drain the chemical solution (Koyama, see Fig. 1).
Regarding claim 10, Osada and Koyama teach the apparatus of claim 9, further comprising: a flow control valve (Koyama, constant pressure valve 18b)… and configured to control a flow rate of the chemical solution that is drained (Koyama, the constant pressure valve is inherently designed to control flow and because it is on the upstream side of shutoff valve 16e, the valve will also control the flow to the drain line as well).
The combination of references does not teach wherein the flow control valve is installed on the drain line; however, it would have been further obvious to rearrange the flow control valve of Osada (as modified by Koyama) by rearranging said flow control valve on the drain line because doing so would have achieved the predictable result of precise flow control with a reasonable expectation of success. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
Regarding claim 13 Osada teaches an apparatus for processing a substrate (substrate processing apparatus, see ABS and Fig. 4), comprising: a circulation line (circulation piping 25) connected to a chemical supply unit (liquid supply device 23 that supplies a chemical liquid) to circulate a chemical solution (see Fig. 4); a filter (circulation filter 28) installed in the circulation line to filter particles in the chemical solution (see Fig. 4); a supply line (supply pipe 31) connected to a first node of the circulation line (see Fig. 4) and configured to supply the chemical solution to the chamber (see Fig. 4); a drain line (drain port 32p)…and configured to drain the chemical solution; a first on-off valve (discharge valve 34) positioned in the circulation line between the first node and the second node (see Fig. 4); and…
Osada does not teach wherein the drain line is connected, in the circulation line, to a second node located between the filter and the first node; a second on-off valve installed in the drain line, wherein the apparatus is programmed to operate, during a first duration, to turn off the first on-off valve and turn on the second on-off valve.
Koyama teaches a substrate liquid treatment apparatus (see ABS) wherein the drain line (drain line 16f) connected, in the circulation line (a drain line 16f connected to the circulation to the circulation line 12), to a second node located between the filter and the first node (see Fig. 1), and configured to drain the chemical solution (the treatment liquid (chemical liquid) circulating through the circulation line 12; therefore the drain is configured to remove the chemical solution); a second on-off valve (shutoff valve 16g) installed in the drain line (see Fig. 1).
It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to modify the drain line of Osada by rearranging said drain line in the circulation line, to a second node located between the filter and the first node, and configured to drain the chemical solution as disclosed by Koyama because it allows for safe and efficient disposal of chemicals used for treatment.
Osada in combination with Koyama teaches a control device which is a computer executing stored programs to control timed valve operations (Osada, see pgs. 12, 15 and 21), therefore the device of Osada operates during defined time valves, such as T1 and T2 (see Fig. 11 of Osada) and Osada further discloses a transitional period between T1 and T2 which is interpreted to be a third time period, thus Osada teaches controlling during a first duration, a second duration and third duration as required by claim 13. And The control device of Osada automatically actuates valves in response to a pump operation; such automated control inherently requires the apparatus to be programmed to be perform the recited operational sequence of “wherein the apparatus is programmed to operate, during a first duration, to turn off the first on-off valve and turn on the second on-off valve, the apparatus is programmed to operate, during a second duration after the first duration, to turn on the first on-off valve and maintain the second on-off valve turned on, and the apparatus is programmed to operate, during a third duration after the second duration, to turn on the second on-off valve and maintain the first on-off valve turned on”.
Regarding claim 15, Osada and Koyama teach the apparatus of claim 13, wherein the apparatus is programmed to further operate to drain the chemical solution that passes through the filter, during the first duration from when a pump of the chemical supply unit is restarted after the pump had stopped , or during the first duration, from when the chemical supply unit is operated after an initial setup of the chemical supply unit (Osada, when an abnormality occurs, the control device 3 may cause the circulation pump 27 to stop the supply of the chemical liquid, see Google Patents) (Koyama, the circulation line purging mechanism 16 is connected, and on the upstream side of the second position 12 c to which the drain line 16 f of the circulation line purging mechanism 16 is connected, see C3/L45-55) (the combination of Osada and Koyama teaches the claimed limitation).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Osada (KR 20200044753) in view of Koyama (USPN 10,037,901) and further in view of Kosai (US 2021/0398828).
Regarding claim 11, Osada and Koyama teach the apparatus of claim 1.
The combination of references does not teach a back pressure valve positioned downstream of the first node in the circulation line and configured to maintain a front-end pressure of the back pressure valve to be constant.
In a related field of endeavor, Kosai teaches a liquid processing apparatus (see ABS) comprising a back pressure valve (backpressure valve 85) positioned downstream of the first node in the circulation line and configured to maintain a front-end pressure of the back pressure valve to be constant (see Fig. 7).
It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to modify the system of Osada by incorporating a back pressure valve as disclosed by Kosai because it is effective in controlling the flow rate in the line as well as maintaining the pressure (Kosai, see C5/L53-65 and C6/L1-10).
Regarding claim 12, Osada, Koyama and Kosai teach the apparatus of claim 11.
Osada and Koyama do not teach a positive pressure valve positioned in the supply line and configured to maintain a constant flow rate of the chemical solution discharged to the chamber by maintaining a rear- end pressure of the positive pressure valve to be constant.
Kosai teaches a liquid processing apparatus (see ABS) comprising a positive pressure valve (static pressure valve 91) positioned in the supply line and configured to maintain a constant flow rate of the chemical solution discharged to the chamber by maintaining a rear- end pressure of the positive pressure valve to be constant (see Fig. 3).
It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to modify the system of Osada by incorporating a positive pressure valve on the supply line as disclosed by Kosai because it aids in controlling the flow rate in the line (Kosai, see C8/L60-67).
Conclusion
A prior art rejection was not applied to claims 6 and 14 because Osaka in combination Koyama do not teach all the structural limitations required to carry out the claimed function.
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 EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773