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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-11, in the reply filed on 7 May 2025 was previously acknowledged. Applicant’s election without traverse of Species 1 and Species 3 (readable on claims 1-11) in the reply filed on 21 August 2025 was previously acknowledged. Claim 12 was previously withdrawn.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 1-11 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. Any claim not specifically mentioned is rejected based on its dependence.
Previously, claim limitations – liquid supply unit (claim 1), concentration detection unit (claim 1), gas discharge unit (claims 8 and 9), pressure measurement unit (claims 8 and 9) – were found to invoke interpretation under U.S.C. 112(f). However, no reference thereof in the disclosure details a specific structure to perform the claimed functions attributed thereto. In response to these findings, liquid supply unit has been amended to liquid supply nozzle, concentration detection unit has been amended to concentration detector, gas processing device has been amended to gas processor, gas discharge unit has been amended to gas discharge path; and pressure measurement unit has been amended to pressure gauge. However, as the specification failed to provide support for the previous claim limitations, as no specific structure was disclosed, the disclosure also necessarily fails to provide the necessary support for these “replacement” amended claim limitations. Presumably, the claim limitations are meant to be interpreted differently than the previous claim limitations. However, it is not clear to Examiner what claim interpretation Applicant intends to claim. Obviously, it cannot be anything specific but different, because there is nothing specific in the original disclosure. If we are to assume the claim limitations are meant to be broader than what was originally claimed to overcome the previous interpretation, then how can there not be a problem with respect to new matter when compared with the original disclosure? If the specific structure is not disclosed, then a broader, generic structure is necessarily also not disclosed. If we assume the limitations are meant to be narrower, again there appears to be an issue of new matter and additionally there is an issue with a lack of clarity, because how can a feature be interpreted more narrowly than something that does not exist? Thus, either way, the claimed features remain drawn to subject matter that is not properly defined in the specification and therefore represent new matter that it is not clear was in the inventor’s possession at the time of filing. In order to expedite examination, the claims have been examined broadly as written in line with Examiner’s best understanding.
Claim 8 and 9 limitation “changing unit” has been amended to flow regulator. However, there is no evidence of this specific feature in the original disclosure. Thus, the feature also represents new matter. Nevertheless, in order to expedite examination, the claims have been examined broadly as written in line with Examiner’s best understanding and the disclosure, wherein the disclosure discloses a blower corresponding to the claimed feature.
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 1-11 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. Any claim not specifically mentioned is rejected based on its dependence.
Previously, claim limitations –liquid supply unit, concentration detection unit, gas discharge unit, pressure measurement unit – were found to invoke interpretation under U.S.C. 112(f). However, no reference thereof in the disclosure details a specific structure to perform the claimed functions attributed thereto. Liquid supply unit has been amended to include a nozzle, concentration detection unit has been amended to concentration detector, gas processing device has been amended to gas processor, gas discharge unit has been amended to gas discharge path; and pressure measurement unit has been amended to pressure gauge. As stated above, presumably, the claim limitations are meant to be interpreted differently than the previous claim limitations. However, it is not clear to Examiner what claim interpretation Applicant intends. Thus, the claims fail to include the necessary clarity in order to properly interpret the bounds of Applicant’s invention. See above for claim interpretation. Clarification and/or correction is requested.
Amended claim 1 now includes the claim recitation, “the operation information being information that includes an operation time period when one of the processors is operated and a non-operation time period when none of the processors is operated” without relating the same to the broader claim 1 limitation “operation states”. In order to expedite information, Examiner has assumed the claim was meant to recite “the operation information being information that includes an operating state of the operating states that includes an operation time period when one of the processors of the plurality of processors is operated and an operating state of the operating states that includes a non-operation time period when none of the processors of the plurality of processors is operated” or similar and has examined accordingly. Clarification and/or correction is requested.
Claim 3 includes the limitation “the operation information being information that includes an operation time period when one of the processors is operated and a non-operation time period when none of the processors is operated” which is now also in claim 1, thus it is repetitive and unnecessary. It is unclear what the limitation is meant to add to the claimed invention. Clarification and/or correction is requested.
With respect to claims 8-9, it is unclear whether and how the now claimed flow regulator is meant to relate to the also claimed fan. In order to expedite examination, Examiner has assumed the claimed flow regulator itself is readable on a blower or a fan and has examined accordingly. Clarification and/or correction is requested.
Additional Claim Interpretations
Additionally, regarding claim 1 “controller”, the feature has been interpreted in light of the specification which states “[0018] Furthermore, the substrate processing system1 includes a control device4. The control device4 is, for example, a computer, and includes a controller18 and a storage19. The storage19 stores a program that controls various types of processes that are executed in the substrate processing system1. The controller18 reads and executes a program that is stored in the storage19 so as to control an operation of the substrate processing system1.” The disclosed controller is inherently not disclosed as either a computer or a program, nor has Applicant made any assertion of such. Thus, Examiner finds that the claimed controller is capable of being read on a computer or an operator or any other feature capable of reading a program and providing an action (any action) so that it is executed in the substrate processing system.
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.
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.
Claim(s) 1 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2011/0308626 to Ogata et al. in view of U.S. Patent Pub. No. 2011/0259521 to Hyakutake et al. and U.S. Patent Pub. No. 2016/0365263 to Peek et al.
Regarding claim 1: in Figs. 1-4, Ogata et al. disclose a substrate processing apparatus substantially as claimed and comprising: a plurality of processors (3A-J)(e.g., including a chamber [31], a substrate holder/holding mechanism [32], a processing fluid supply unit [33] and a recovery cup [34]) that each include the substrate holder/holding mechanism and that is capable of processing a substrate by using a chemical product; an exhaust route (e.g., 35, 6, 61a-63a) where a gas that is discharged from the plurality of processors passes and flows therethrough; and controller (see, e.g., paras. 67-70) that controls the plurality of processors and the exhaust route.
However, Ogata et al. fail to disclose a gas processor that is provided on the exhaust route and eliminates a target component that is included in the gas that passes and flows through the exhaust route from the gas, wherein the gas processor includes: a duct that has a flow path where the gas passes therethrough in an inside thereof; a partition plate that partitions the flow path into a plurality of spaces where the partition plate is formed of a porous material that is capable of penetrating the gas and is capable of retaining a liquid; a liquid supply nozzle that supplies a dissolving liquid that is capable of dissolving the target component that is included in the gas to the partition plate; and a concentration detector unit that detects a concentration of the target component that is included in the gas, and wherein the controller regulates a flow volume of the dissolving liquid that is supplied from the liquid supply unit to the partition plate, based on at least one of operation information that indicates operation states of the plurality of processors and a detection result of the concentration detector, the operation information being information that includes an operation time period when one of the processors is operated and a non-operation time period when none of the processors is operated.
In Figs. 1-5, Hyakutake et al. disclose a substrate processing apparatus including a processor (e.g., Fig. 2) that processes a substrate by using a chemical product; an exhaust route (35) where a gas that is discharged from the processor and passes and flows therethrough; and a gas processor (multiple structures) that is provided on the exhaust route and eliminates a target component that is included in the gas that passes and flows through the exhaust route from the gas, wherein the gas processor includes: a duct (23) that has a flow path where the gas passes therethrough in an inside thereof; a partition plate (52-54) that partitions the flow path into a plurality of spaces where the partition plate is formed of a porous material that is capable of penetrating the gas and is capable of retaining a liquid; a liquid supply nozzle (48-50) that supplies a dissolving liquid that is capable of dissolving the target component that is included in the gas to the partition plate, wherein the gas processor is provided for the purpose of treating exhaust gas discharged from the processing unit thereby reducing the density of the target component contained in the exhaust gas (see, e.g., paras. 8 and 19).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided in Ogata et al. a gas processor that is provided on the exhaust route and eliminates a target component that is included in the gas that passes and flows through the exhaust route from the gas, wherein the gas processor includes: a duct that has a flow path where the gas passes therethrough in an inside thereof; a partition plate that partitions the flow path into a plurality of spaces where the partition plate is formed of a porous material that is capable of penetrating the gas and is capable of retaining a liquid; a liquid supply nozzle that supplies a dissolving liquid that is capable of dissolving the target component that is included in the gas to the partition plate in order to treating exhaust gas discharged from the processing unit thereby reducing the density of the target component contained in the exhaust gas as taught by Hyakutake et al.
As part of a substrate processing apparatus (100) including a processor (101) and an exhaust route (301 and 302), Peek teaches providing a concentration detector (see, e.g., Figs. 1 and 3-7, 108 and 109) that detects a concentration of the target component that is included in a gas, and wherein a controller (102) can regulate turning a gas processor (e.g., 110-112) off and/or on, based on at least one of operation information that indicates operation states of the processor and a detection result of the concentration detector, the operation information being information that includes, based on a recipe, an operation time period (e.g., “ON”) the processor is operated and a non-operation period (e.g., “OFF”) when the processor is not operated for the purpose of allowing proper processing of a target component/gas before it will be released to atmosphere. Also see, e.g., paras. 35-42, 78-107. Therefore, Peek teaches both situations (i.e. control based on operation information/state/period and control based on concentration detection).
Thus, it would have been further obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided Ogata further comprising providing a concentration detector that detects a concentration of the target component that is included in a gas, and wherein the controller regulates a flow volume the dissolving liquid that is supplied from the liquid supply nozzle to the partition plate of modified Ogata et al. (e.g. by switching to an appropriate gas processor, off or on), based on at least one of operation information that indicates operation states of the plurality of processors, the operation information being information that includes an operation time period when one of the processors of the plurality of processors is operated and a non-operation time period when none of the processors of the plurality of processors is operated and a detection result of the concentration detection unit in order to allow proper processing of a target component/gas before it will be released to atmosphere as taught by Peek
With respect to claim 10, in modified Ogata et al., the controller of Peek may start the process that regulates the flow volume of the dissolving liquid that is supplied from the liquid supply nozzle to the partition plate, depending on a request signal from another device (e.g. user of (and/or) visual display device) that is different from the substrate processing apparatus (see, e.g., para. 99).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Ogata et al. as applied to claims 1 and 10 above, and further in view of U.S. Patent No. 6,468,490 to Shamouilian et al.
Modified Ogata et al. disclose the invention substantially as claimed and as described above.
However, modified Ogata et al. fail to disclose a porous material that forms the partition plate is a porous ceramic(s).
Shamouilian et al. teach providing a porous material that forms a partition plate is ceramic for the purpose of reducing hazardous gas content in an effluent (see, e.g., column 6, rows 11-44).
Thus, it would have been obvious to one of ordinary to one ordinary skill in the art before Applicant’s invention was effectively filed to have provided the porous material in modified Ogata et al. forms a partition plate is a porous ceramic in order to reduce hazardous gas content in the effluent as taught by Shamouilian et al.
Response to Arguments
Applicant’s claim amendments and arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The claim rejections have been modified to take into account the claim amendments. Examiner notes that Applicant’s remarks do not clearly express how the amendments claims are believed to avoid the prior art references.
Regarding claim amendments made to avoid claim interpretation under 35 USC 112, such amendments present additional related issues. These related issues are addressed above.
The double patenting rejections remain. See below. Although the amended subject matter is not found in claims 7 and 8 of ‘384. The relevant subject matter is found in claim 1 of ‘384 in relevant part (wherein features of claim 1 are inherently part of claims 7 and 8, since they depend therefrom), which reads “the operation information is recipe information including a number of the processing units to be operated for a time period”. If recipe information includes information including the number of processing units to be operated for a time period, it will necessarily include information when one of the processors is operated (i.e. at least one) and when none of the processors are operated.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 8 of U.S. Patent No. 12,377,384. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter addressed therein is effectively equivalent.
Conclusion
The (prior) art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pat. Pubs. 20220395776 and 20220399209 appear to disclose apparatus similar to the present application. JP Pubs. No. 2006210839 and 2006216803 and USP Pat. Pubs. 20120227768; 20160365263; 20190148181; and 20190157124 disclose apparatus for monitoring, controlling and/or treating gas discharge from a substrate processing apparatus.
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 KARLA MOORE whose telephone number is (571)272-1440. The examiner can normally be reached Monday-Friday, 9am-6pm EST.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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