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 .
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 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 1-4 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. The newly added limitation “wherein H ranges from 1.9 µm to 6.0 µm, and W ranges from 2.1 µm to 4.3 µm” is not supported in the specification. Applicant refers to TABLE 1 for support of the newly added ranges. However, Table 1 only shows 10 samples, while each individual limitation of the range is shown in a sample, no samples includes the beginning range (i.e. H=1.9 µm, W= 2.1 µm, and θ is about 30 or about 65) or the ending range (i.e. H=6 µm, W=4.3 µm, and θ is about 30 or about 65). Furthermore, there is no evidence that values that fall outside the claimed ranges but fulfill the claimed equation (i.e. H=1 µm, W=6 µm which has a value of 3 and meets the equation limitations) with the claimed angle θ will not function as claimed. Thus Table 1 does not support the claimed ranges.
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.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Matsueda et al, JP2018170152 A.
Regarding claim 1, Matsueda et al teaches a metal mask 503, the metal mask comprising a first surface 539, a first opening 547 provided on the first surface 539, a second surface 543 opposite to the first surface 539, and a second opening 543 provided on the second surface 538, the metal mask 503 further comprising a first through hole 546 communicating with the first opening 547 and a second through hole 545 communicating with the second opening 543, the first through hole and the second through hole communicating with each other to become an evaporation hole 541, the metal mask 503 further comprising an annular protrusion located at a juncture 541 of the first through hole and the second through hole (Figure 4A), wherein W is a horizontal distance between an edge of the first opening and an imaginary connecting line, the imaginary connecting line passes through an edge of the second opening and an end edge of the annular protrusion, H is a vertical distance between the end edge of the annular protrusion and the first surface, and θ is an included angle between the imaginary connecting line and an imaginary extending plane of the first surface.
Matsueda et al differs from the present invention in that Matsueda et al does not teach that H ranges from 1.9 µm to 6.0 µm, W ranges from 2.1 µm to 4.3 µm, and θ ranges from 30-65 degrees satisfying the following equation (hereafter equation):
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However, a person having ordinary skill in the art at the time of the invention would have known how determine the optimum or workable ranges of H, W, and θ satisfying the equation by routine experimentation. Having determined such optimum or workable ranges, such person would have been motivated to modify Matsueda et al to include the claimed ranges of H, W, and θ and satisfying the equation.
Applicant is reminded that when a particular parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of the variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In addition, where the general conditions of such a particular parameter in a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) as well as MPEP § 2144.05 (II)(A). In the present case, the geometry of the through hole (i.e. H, W, and θ) control the deposited layer. To that end, the values of H, W, and θ are result-effective variables.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Matsueda et al to include the claimed values of H, W, and θ satisfying the equation. To that end, claim 1 is obvious in view of Matsueda et al.
The Examiner also notes that:
It was held in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), by the Federal Circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (Also see MPEP 2144.04 (IV)(A))
It has been held that dimensions are not sufficient to patentably distinguish over the prior art. (See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) or MPEP 2144.04 (IV)(A)
Regarding claim 2, Matsueda et al teaches a caliber of the first opening 547 is smaller than a caliber of the second opening 543. (Figure 4A)
Regarding claims 3 and 4, Matsueda et al teaches a cross-sectional shape of the first through hole 546 and a cross-sectional shape of the second through hole 545 are both semicircles.
Response to Arguments
Applicant's arguments filed August 12, 2025 have been fully considered but they are not persuasive.
Applicant argues that:
“Matsueda et al. fail to disclose the technical feature "H ranges from 1.9 m to 6.0 m, and W ranges from 2.1 m to 4.3 m" defined in amended claim 1. Therefore, Matsueda et al. cannot achieve the effect that amended claim 1 can achieve.
As discussed above, Matsueda et al. do not disclose each and every feature recited in amended claim 1. Therefore, amended claim 1 and its dependent claims should be patentable over Matsueda et al.”
The Examiner agrees that Matsueda et al does not anticipate the claims. However, the Examiner notes that the claims are not rejected under 102, but are rejected under 103. As argued above, it would have been obvious to optimize the values of H, W, and θ in the apparatus of Matsueda et al such that Matsueda et al includes the claimed ranges. Applicant has not addressed the 103 rejection. Therefore, the arguments are moot and the rejection is valid.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art teaches the technological background of the invention. The cited art contains patents that could be used to reject the claims under 35 USC § 103. These rejections have not been made because they do not provide any additional or different teachings, and if they were applied, would have resulted in an undue multiplication of references. (See MPEP 707.07(g)) The following referenced could also be used to reject the claims under 103: JP 6948386 B2, US 20180205018 A1, or US 20180202035 A1.
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 Jeffrie R Lund whose telephone number is (571)272-1437. The examiner can normally be reached 9 am-5 pm (Monday-Friday).
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/Jeffrie R Lund/Primary Examiner, Art Unit 1716