DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 02/23/2026 without traverse of Group I, species I-1, claims 1-12 for further examination. Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on 12/27/2022 & 02/19/2024 are being considered by the examiner.
References lined-through were not considered as an English abstract or translation has not been provided.
Claim Interpretation
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “support unit” in claim 1; “liquid supply unit” in claim 1; “measurement unit” in claims 1, 8 & 10-11; “accommodation unit” in claim 11.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections
6. 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 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.
7. 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 Rejections - 35 USC § 102
8. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
9. Claims 1-12 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Jung et al. (US 2020/0168478 A1) hereinafter Jung (the terminology of the claims in the application is used, but the references of Jung are included between parentheses).
As regards to claim 1, Jung discloses an apparatus for treating a substrate (W) (abs; fig 1-11), comprising:
a support unit (13) supporting a substrate (W) ([0031]; fig 1);
a treating container (11) covering an outer side of the support unit (13) ([0031]; fig 1);
a liquid supply unit (140) including a nozzle (111) ejecting a liquid to the substrate (W) supported on the support unit (13) ([0031]-[0034]; fig 1); and
a home port (110+120+130+150) which is positioned outside the treating container (11), and in which the nozzle (111) rests, wherein the home port (110+120+130+150) includes a body (110+150) having a discharge space (see fig 1, interior space of 110 before and after 150) to which the liquid ejected from the nozzle (111) is discharged therein, and a measurement unit (950) connected to the body (110+150) and measuring a charging amount of the liquid discharged from the discharge space (see fig 1, interior space of 110 before and after 150) ([0031]-[0043]; [0084]-[0087]; fig 1 & 10).
As regards to claim 2, Jung discloses an apparatus (abs; fig 1-11), wherein a main hole (see fig 1, hole of 110) through which the liquid ejected from the nozzle (111) passes is formed at an upper portion of the body (110+150), and the home port (110+120+130+150) further includes a partitioning plate (150) partitioning the discharge space (see fig 1, interior space of 110 before and after 150) into a first space (see fig 1, interior space of 110 before 150) which is in communication with the main hole (see fig 1, hole of 110), and a second space (see fig 1, interior space of 110 after 150) which is in communication with the first space (see fig 1, interior space of 110 before 150) ([0031]-[0043]; fig 1).
As regards to claim 3, Jung discloses an apparatus (abs; fig 1-11), wherein the partitioning plate (150) is disposed to be horizontally inclined in a falling direction of the liquid discharged from the nozzle (111) ([0031]-[0043]; fig 1).
As regards to claim 4, Jung discloses an apparatus (abs; fig 1-11), wherein an opening (see fig 1) which makes the first space (see fig 1, interior space of 110 before 150) and the second space (see fig 1, interior space of 110 after 150) be in communication with each other is formed in the partitioning plate (150), and the opening is formed below a falling point of the liquid (see fig 1, liquid of 140) of the liquid ejected from the nozzle (111) ([0031]-[0043]; fig 1).
As regards to claim 5, Jung discloses an apparatus (abs; fig 1-11), wherein the opening is formed in a slit shape (pumps have split openings) ([0031]-[0043]; fig 1).
As regards to claim 6, Jung discloses an apparatus (abs; fig 1-11), wherein the opening is at least one hole (see fig 1, hole/opening into 150) penetrating the partitioning plate (150) ([0031]-[0043]; fig 1).
As regards to claim 7, Jung discloses an apparatus (abs; fig 1-11), wherein a first discharge line (see fig 1, pipe of 110) to which the liquid introduced into the first space (see fig 1, interior space of 110 before 150) is discharged is connected to a lower portion of the first space (see fig 1, interior space of 110 before 150), and a second discharge line (see fig 1, pipe of 110) to which the liquid introduced into the second space (see fig 1, interior space of 110 after 150) is discharged through the first space (see fig 1, interior space of 110 before 150) is connected to a lower portion of the second space (see fig 1, interior space of 110 after 150) ([0031]-[0043]; fig 1).
As regards to claim 8, Jung discloses an apparatus (abs; fig 1-11), wherein the measurement unit (950) measures a charging amount of the liquid introduced into the second space (see fig 1, interior space of 110 after 150) of the first space (see fig 1, interior space of 110 before 150) and the second space (see fig 1, interior space of 110 after 150) ([0031]-[0043]; [0084]-[0087]; fig 1 & 10).
As regards to claim 9, Jung discloses an apparatus (abs; fig 1-11), wherein each of materials of the body (110+150) and the partitioning plate (150) includes an insulating material (material of 110), and surfaces of the body (110+150) and the partitioning plate (150) defining the second space (see fig 1, interior space of 110 after 150) include a conductive material (material of 120) ([0007]; [0031]-[0043]; [0072]; fig 1 & 10, clm 3, 13 & 16).
As regards to claim 10, Jung discloses an apparatus (abs; fig 1-11), wherein the measurement unit (950) is a Feraday Cup ([0084]-[0087]; fig 1 & 10).
As regards to claim 11, Jung discloses an apparatus (abs; fig 1-11), wherein the measurement unit (950) includes an accommodation unit (see fig 10, bowl) accommodating ions or electrons included in the liquid, and a measurement unit (950) connected to each of the surfaces of the body (110+150) and the partitioning plate (150) exposed to the second space (see fig 1, interior space of 110 after 150), and measuring the charging amount of the liquid, and the accommodation unit (see fig 10, bowl) is below the second space (see fig 1, interior space of 110 after 150) ([0031]-[0043]; [0084]-[0087]; fig 1 & 10).
Regarding claim 12, the recitation “wherein the liquid includes a photosensitive liquid or a development liquid”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Jung since Jung meets all the structural elements of the claim and is capable of including a photosensitive liquid or a development liquid, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 12, Jung discloses an apparatus (abs; fig 1-11), wherein the liquid can include a photosensitive liquid or a development liquid ([0031]-[0043]; fig 1).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights