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 .
Response to Amendment
The examiner acknowledges the cancellation to claims 1-7 and the addition of claims 8-14.
Response to Arguments
Regarding the applicant’s argument of the priority and anticipation rejection (sections 6-7 of the applicant’s remarks) of the application, have been fully considered and are not persuasive. The date appearing on the filing receipt as the "Filing Date or 371(c) Date" is the date on which the last of the 35 USC 371(c)(1) and (c)(2) requirements has been received in the office. The office notified the applicant that their translation submitted on 02/10/2023 was defective (see M905 dated 10/23/2023). In reply to the notice, a proper translation of the instant application was submitted on 12/20/2023 (which is the last date of the 35 USC 371(c)(2) requirement). Therefore, the filing date is correct, and the 102(a)(1) rejection over JP2020136213 stands.
Regarding the applicant’s argument wherein Yan and Yokoyama do not teach the water quality mechanism is provided in each of the branched flow paths, has been fully considered, but is not persuasive. As stated in the nonfinal rejection dated 02/27/2026, the examiner had shown a duplication of the flow path of Yan, which included a water quality mechanism. {Yan, abstract re. pH and redox meters} Given these sensors were duplicated in the duplication of Yan, each flow path would have a separate sensor, and thus each sensor would be capable of measuring the target component in each of the branched sections.
Regarding the applicant’s argument wherein Yan and Yokoyama do not teach an additive control mechanism configured to independently control an additive amount of the pH adjuster and an additive amount of the redox potential adjuster in the respective branched flow path, has been fully considered, but is not persuasive. As stated in the nonfinal rejection, the flow path of Yan, including the mechanisms associated with that flow path, were duplicated. Given there would be multiple additive control mechanisms, it is clear that they would work independently from one another in each of the flow paths they are situated in. Parallel treatment flow paths are well known in the art, and the duplication to Yan’s singular flow path encompassed the limitation wherein each flow path can be controlled independently to one another. Especially in combination with Yokoyama, which teaches multiple types of processing fluids, as well as having taught structural components that make it compatible with multiple, duplicated flow paths of Yan.
Regarding the applicant’s arguments wherein Yan and Yokoyama do not teach two or more types of pH/redox potential-adjusted water having different pH’s and/or redox potentials are stored in their respective reservoirs and are selectively supplied from the reservoirs to a use point, has been fully considered, but is not persuasive. As stated in the final rejection below, this limitation is purely functional, with no positive recitation of structure, and in a device claim, if functional language is to have patentable weight, it must recite or limit the structure of the device. Opposed to this limitation, wherein the functional limitation limits the liquid within a reservoir, or otherwise known as a “material worked upon” and thus does not have patentable weight. However, in practice of compact prosecution, the examiner has referenced in the final rejection to follow, where this limitation (if it positively recited structure) is taught, even though it does not hold patentable weight in its current state.
Regarding the applicant’s argument of the non-obviousness combination of Yan and Yokoyama, the examiner does not find this argument persuasive, as these invention both appear in a specific category of art wherein there are treatment plant specifically for creating a solution to clean substrate that have been used in semiconductor manufacturing. Also, Yokoyama, as stated in the nonfinal rejection, teaches why one would want to utilize components of their system, specifically [0050], wherein Yokoyama teaches how their system can prevent or reduce secondary contamination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Clam 14 does not positively recite structure in the body of the claim, as the limitation consists of intended use functional language. Because of this, the claim does not hold patentable weight, and thus is not further limiting over claim 8 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. See MPEP § 2114.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Japanese Application No. JP2020136213. *Note a machine translated, English version was used to determine clear anticipation. The machine translated, English version will be attached to the office action. Given the timeline to enter the national stage in the PCT/international regulations, priority to the same inventor’s previous Japanese application could not be given. (See further explanation in the remarks section regarding the confusion of the filing date of the instant application). To promote compact prosecution, claims will not be mapped, as it is clear all the limitations of the current application are taught by the prior Japanese application.
Regarding the confusion of the priority date of the instant application, the examiner had reached out to the PASM support team for the discrepancy in the applicant’s belief and office’s belief of the priority date, the resulting conclusion of a priority date of 12/12/2023, which has come from the support team.
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.
Claim(s) 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yan (JP2018167245A) in view of Yokoyama (US20070277930A1). *Yan is directed to the attached, machine-translated, English version.
Regarding claim 8, Yan teaches a pH/redox potential-adjusted water production apparatus that produces cleaning water {Abstract re. an apparatus for producing high-purity pH and redox potential adjusting water} having a desired pH and redox potential by adding a pH adjuster {Middle page 4 re. pH of 9 to 13} and a redox potential adjuster to ultrapure water, {Middle page 4 re. redox potential of 0 to 1.7 V} comprising: an ultrapure water supply line; {Middle page 2 re. ultrapure water supply line}
a hydrogen peroxide removal mechanism provided in the ultrapure water supply line; {Middle page 2 re. the ultrapure water supply line to the hydrogen peroxide removal mechanism}
a pH adjusting mechanism configured to add the pH adjuster {Middle page 3 re. control device 11 controlling pH adjusting agent through device 3A} and a redox potential adjusting mechanism configured to add the redox potential adjuster, {Middle page 3 re. control device 11 controlling oxidation-reduction adjusting agent through device 3B} wherein the pH adjusting mechanism and the redox potential adjusting mechanism are provided in each of the branched flow paths; {Middle page 3 re. pH and redox adjusting agent devices 3A and 3B}
an adjusted water quality monitoring mechanism provided in each of the branched flow paths downstream of the pH adjusting mechanism and the redox potential adjusting mechanism, and configured to measure water quality of pH/redox potential-adjusted water in each branched flow path; {Middle page 2 re. pH and redox measuring units at a subsequent stage of the injecting and redox adjusting agent injecting devices}
an additive amount control mechanism provided for each of the branched flow paths and configured to independently control an additive amount of the pH adjuster and an additive amount of the redox potential adjuster in the respective branched flow path {Middle page 3 re. control device 11 is connected to pH and redox devices and able to control injection amounts} based on a measurement result obtained from the adjusted water quality monitoring mechanism in the respective branched flow path. {Abstract re. injection amounts based on pH meter 10A and ORP meter 10B}
Yan is silent to branched flow paths of the ultrapure water supply line that are branched into two or more downstream of the hydrogen peroxide removal mechanism, however a feature in a claimed limitation may not be considered to have patentable weight if the limitation is simply a duplication of parts, wherein there is no new, unexpected result. In this instant application, the claimed feature of branched flow paths downstream of the hydrogen peroxide removal mechanism would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention as parallel flow paths is not new within the art of water treatment, and doing so would increase the operating efficiency of the system, wherein either two entirely separate flow paths could operate simultaneously increasing throughput; or one flow path could be used, while the other is under maintenance for cleaning, repairs, etc., allowing the system to continue operation with no downtime. See MPEP § 2144.04(VI)(B) In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced”
Yan fails to teach a reservoir provided in each of the branched flow paths to store the pH/redox potential-adjusted water, wherein each of the reservoirs is connected to the adjusted water quality monitoring mechanism of the respective branched flow path;
and wherein two or more types of the pH/redox potential-adjusted water having different pHs and/or redox potentials are stored in the respective reservoirs and are selectively supplied from the reservoirs to a use point.
Yokoyama teaches a reservoir provided in each of the branched flow paths to store the pH/redox potential-adjusted water. {[0114] re. supply tanks 21 and 22}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Yan with Yokoyama’s teachings of a reservoir provided in each of the branched flow paths to store the pH/redox potential-adjusted water as Yokoyama, similar to Yan is a water processing system for cleaning substrate from semiconductor production {Yokoyama, [0001]}. Multiple supply tanks allowing for continuous operation of one type of processing fluid, or a separate type of processing substrate without the need for downtime to switch the cleaning fluid to match the substrate that needs to be cleaned; both options improve the efficiency of the system through saving time of the user.
Yokoyama further teaches wherein two or more types of the pH/redox potential-adjusted water having different pHs and/or redox potentials are stored in the respective reservoirs {[0017] re. two or more types of processing liquids} and are selectively supplied from the reservoirs to a use point. {[0017] re. supplying liquids to the substrate processing unit}
Note that the previously mentioned limitation of the types of fluid within the reservoirs, while taught and mapped to Yokoyama, do not hold patentable weight as they are considered functional limitations with no positive recitation of structure. The examiner merely mapped to these limitations for clarity of the record and compact prosecution, even though in their current state, do not hold patentable weight.
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Yan with Yokoyama’s teachings wherein two or more types of the pH/redox potential-adjusted water having different pHs and/or redox potentials are stored in the respective reservoirs and are selectively supplied from the reservoirs to a use point as adding a plurality of cleaning/processing liquids, allow for continuous operation even when one supply tank has run out of fluid, as the system can switch to another supply tank, without downtime, and continuing substrate processing. {Yokoyama, [0020]}
Yan modified by Yokoyama are silent to wherein each of the reservoirs is connected to the adjusted water quality monitoring mechanism of the respective branched flow path, however it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Yan, as Yan further teaches these water quality mechanisms can be a part of the discharge line. {Yan, middle page 3} These discharge lines contain identical solutions to what would be in the reservoirs; and one would be motivated to utilize reservoirs in between reaction sections opposed, to simply discharge lines, as doing so would allow the user to monitor the parameters of the treated solution, and be capable of stopping the discharge of the cleaning solution to other areas of the system, if the treated solution falls out of tolerance with the recommended parameters.
Regarding claim 9, Yan teaches wherein at least one of the two or more types of the pH/redox potential- adjusted water has a pH of 9 or higher and 13 or lower {Middle page 4 re. pH of 9 to 13} and a redox potential of 0 V or higher and 1.7 V or lower. {Middle page 4 re. redox potential of 0 to 1.7 V}
Regarding claim 10, Yan teaches wherein the pH adjuster is one or more of ammonia, sodium hydroxide, potassium hydroxide, TMAH, hydrochloric acid, hydrofluoric acid, citric acid, formic acid, and carbon dioxide gas, {Middle page 2 re. wherein the pH adjuster can be ammonia} and the redox potential adjuster is one or more of hydrogen peroxide, ozone gas, and oxygen gas. {Middle page 2 re. wherein the redox regulator can be hydrogen peroxide}
Regarding claim 11, Yan teaches wherein the pH adjuster or the redox potential adjuster is a liquid and is fed into the ultrapure water supply line by a pump or a pressurizing means {Bottom page 3 re. pH or redox agent as a liquid} that uses a closed tank and an inert gas. {Bottom page 3 re. pH or redox agents are put in an airtight container with an inert gas}
Regarding claim 12, Yan teaches wherein the pH adjuster or the redox potential adjuster is a gas and is added by gas dissolution using a direct gas-liquid contactor with a gas-permeable membrane module or an ejector. {Bottom page 3 re. pH or redox agents are gases, with a direct gas-liquid contactor such as a membrane or an ejector}
Regarding claim 13, Yan teaches wherein the reservoir for the pH/redox potential-adjusted water has an inert gas supply mechanism. {Top page 4 re. the inert gas is supplied to the water from an inert gas source}
Regarding claim 14, Yan teaches wherein the pH/redox potential-adjusted water is for cleaning a surface of a semiconductor material on which a transition metal is partially or entirely exposed. {Bottom page 4 re. water W2 being used to clean semiconductor materials}
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Aoki (US20030094610A1) directed to a system for production of washing fluid, utilizing hydrogen peroxide removal, pH and redox adjusting, and ultrapure water; all for washing semiconductor production devices.
THIS ACTION IS MADE FINAL. 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 CONNOR J ROTONDI whose telephone number is (571)272-2058. The examiner can normally be reached M-F 8:00am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CONNOR J ROTONDI/ Examiner, Art Unit 1773 /JOSEPH W DRODGE/Primary Examiner, Art Unit 1773
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